National Arbitration Forum

 

DECISION

 

LD Products, Inc. v. David Kelly (4inkjets-net-dom) c/o Arundel Net

Claim Number: FA0611000831318

 

PARTIES

Complainant is LD Products, Inc. (“Complainant”), represented by Karl S. Kronenberger, of Kronenberger Burgoyne, LLP, 150 Post Street, Suite 520, San Francisco, CA 94108.  Respondent is David Kelly (4inkjets-net-dom) c/o Arundel Net (“Respondent”), PO Box 475, Glen Burnie, MD 21061.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <4inkjets.net> (the “Domain Name”), registered with Dstr Acquisition Vii, Llc.

 

PANEL

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.

 

Michael Albert as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 2, 2006; the Forum received a hard copy of the Complaint on November 3, 2006.  Complainant submitted an Amended Complaint to the Forum on, or about, November 8, 2006. 

 

On November 3, 2006, Dstr Acquisition Vii, Llc confirmed by e-mail to the National Arbitration Forum that the <4inkjets.net> domain name is registered with Dstr Acquisition Vii, Llc and that the Respondent is the current registrant of the name.  Dstr Acquisition Vii, Llc has verified that Respondent is bound by the Dstr Acquisition Vii, Llc 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 November 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 4, 2006 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@4inkjets.net by e-mail.

 

A timely Response was received on November 16, 2006; however, the Response was deficient pursuant to Paragraph 5(a) of the ICANN Rules (the “Rules”) because it was not received in e-copy.  In addition, Respondent sent the Forum an e-mail in connection to the Response which also appears deficient pursuant to Paragraph 5(a) of the Rules.  Despite these deficiencies, the Panel decides to take the documents under consideration.  See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process.”); see also Buy Owner International, Inc. v. Frank, D2002-0407 (WIPO July 23, 2002) (considering the substance of a one-page e-mail sent to the Forum as a Response, even though e-mail failed to comport with Paragraph 5(a) of the Rules).

 

On November 28, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Michael Albert as Panelist. 

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant. 

 

PARTIES’ CONTENTIONS

A.  Complainant

 

Complainant, LD Products, Inc., d/b/a 4inkjets.com, is an Internet retailer of printer accessories and supplies, including printing cartridges and refill kits.  Aaron Leon is the CEO of LD Products, Inc. and founded the company in 1999.  Complainant claims it has continuously used the mark 4INKJETS in connection with the marketing and sales of its products and services since its inception.  For the reasons stated below, Complainant requests this Panel to transfer the Domain Name. 

 

Complainant asserts that it meets the first element of Paragraph 4(a) of the Policy (“Paragraph 4(a)”) because Respondent’s registration of 4INKJETS is identical or confusingly similar to a mark in which the Complainant has rights.  Complainant currently owns federally-registered rights to the service mark 4INKJETS and first applied for registration on August 3, 2003.  Respondent registered the Domain Name before Complainant obtained registration of the mark, but Complainant avers it established rights to the 4INKJETS mark long before Respondent registered the Domain Name because the mark had acquired secondary meaning through use in commerce. 

 

Complainant provides the sworn Declaration of Aaron Leon to support its assertion that it has invested significant time and money into advertising under the 4INKJETS mark, and that Complainant has been successful and has continued to expand its operations as a result of this investment.  Additionally, Complainant offers evidence reflecting that the media and the computer industry have recognized the quality of Complainant’s products and services through unsolicited awards and media coverage. 

 

Furthermore, Complainant states it meets the second element of Paragraph 4(a) because Respondent has no rights or legitimate interests in the Domain Name.  Respondent registered the Domain Name by choosing “4INKJETS” as the second-level domain name and “.net” as the generic top-level domain name.  Complainant avers that Respondent knew of Complainant’s rights to 4INKJETS at the time of registration.  Also, Respondent allegedly used the Domain Name to advertise competing goods and services on the website.  Complainant offers evidence of an archived web-page which shows that Respondent used the webpage to post hyperlinks connecting to competing products and services.  In addition, Complainant claims that Respondent is not, and never has been, known by the name 4INKJETS. 

 

Finally, Complainant argues that it meets the third element of Paragraph 4(a) because Respondent registered and used the Domain Name in bad faith, having been aware of Complainant’s mark at the time of registration.  As the web page to which the Domain Name resolves previously contained links to competing businesses, Complainant asserts that Respondent used the Domain Name to lure Internet users to its website by trading on the goodwill of Complainant’s well known mark. 

 

B.  Respondent

 

Respondent concurs with Complainant’s request that this Panel transfer the Domain Name.  In its formal Response, the Respondent “stipulates and agrees to a decision in this case in favor of the Complainant . . . and requests that the Panel order [the Domain Name] transferred to Complainant.” 

 

But in an informal e-mail (the “e-mail”) sent to the Forum, Respondent states he wants “to add the additional information as background.”  Essentially, this background information portrays the controversy as an innocent misunderstanding.  Respondent claims he worked, as a sub-contractor, for an Internet search engine optimization company (the “optimization company”).  Complainant allegedly hired the optimization company to promote its website in search engine results.  Respondent claims the optimization company gave him the task of promoting the Complainant’s website, <4inkjets.com>.   Respondent claims that he registered the Domain Name to promote <4inkjets.com>.  Respondent further claims that, after Complainant stopped doing business with the optimization company, the Domain Name stayed active because it was set to automatically renew.  Respondent further claims that once he received a cease-and-desist demand from Complainant, he agreed to transfer the Domain Name to Complainant, but that executing the transfer “slipped through the cracks.”  Still, Respondent maintains “[t]here is no dispute in this case.”  Additionally, Respondent avers that once he stopped using the Domain Name to promote Complainant’s products and services he only used the website to display search engine results. 

 

FINDINGS

The Panel finds that even though both the Complainant and the Respondent request a transfer in their filings, the Complainant must still prove the elements of its claim.  The Panel finds that Complainant has provided sufficient evidence to prove that the Domain Name is identical to Complainant’s mark, that Respondent has no rights or legitimate interests in Complainant’s mark, and that Respondent registered and used the Domain Name in bad faith. 

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

A.  The Parties’ Stipulation Does Not Eliminate the Need to Prove the Merits.

 

The Policy, Rules, and the National Arbitration Forum’s Supplemental Rules (the “Supplemental Rules”) lack provisions that specifically empower this Panel to transfer the Domain Name merely because both parties request the transfer.[1] 

 

By filing a complaint under Paragraph 4(a) of the Policy, a complainant initiates a mandatory proceeding.  Policy ¶ 4(a).  Under the Policy, complainant bears the burden to prove all three elements of its UDRP claim.  Id.  Furthermore, the Rules and Supplemental Rules require complainant to address the substantive merits of the claim.  Rules ¶ 3(b)(ix), Supplemental Rules ¶ 4(a).  A respondent may ease this burden through stipulating to a complainant’s contentions.  But the parties’ mutual requests for transfer, by themselves, are insufficient to remove the burden and necessity of proving the elements of the claim.  Of course, a registrant may choose to transfer, cancel, or change its domain name outside of an administrative proceeding.  But when a complainant engages this mandatory administrative proceeding, the current Policy and Rules require that complainant “must prove that each of [the] three elements are present” before a Panel will transfer a domain name. 

 

Other panels have taken a different view and have transferred domain names without considering the merits, when both parties requested such transfer.  See Boehringer Ingelheim Int’l GmbH v. Modern Limited – Cayman Web Development, FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring domain name without reaching merits because parties had agreed to such transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (holding that transfer of the domain name without reaching the merits would be “expedient and judicial”); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) (holding that when both parties request a transfer “the [p]anel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also The Prudential Ins. Co. of Am. v. Keohane, FA 736647 (Nat. Arb. Forum July 18, 2006).

 

           Absent clear authority in the Policy or Rules to effect a stipulated transfer, however, the Panel will proceed to analyze whether the elements of the claim have been met.

 

B.  Respondent Admits Complainant’s Contentions.

 

Respondent’s informal e-mail does not clearly indicate the intended purpose of the “background information.”  Pieces of Respondent’s “background information” contradict some of the Complainant’s assertions.  But the formal response “stipulates and agrees to a decision in favor of the Complainant.”  A fair reading of the Response taken together with the e-mail supports the conclusion that Respondent has stipulated to the Complainant’s assertions, albeit only for the purposes of this dispute.  No defenses are offered to this Panel.

 

            C.  Complainant Has Proven the Required Policy Elements.

 

Paragraph 4(a) 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 the Respondent is identical or confusingly similar to a

       trademark or service mark in which the Complainant has rights;

(2)  the 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.

 

(1)  Identical and/or Confusingly Similar

 

Complainant provides sufficient evidence to establish it has rights in the 4INKJETS mark.  Complainant establishes rights through its continuous use of the mark in commerce since 1999, and because it registered the service mark 4INKJETS with the United States Patent and Trademark Office (USPTO).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”); see also Qwest Communications Int’l Inc. v. NetQwest Inc., FA 287150 (Nat. Arb. Forum July 28, 2004) (citing 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.”)).  Respondent stipulates that Complainant’s mark is valid. 

 

Additionally, the Domain Name is identical to the 4INKJETS mark, except for the addition of the top-level domain name “.net.”  As matter of law, this addition is a generic and functional suffix which is irrelevant to the analysis of similarity.  See Tropar Mfg Co., Inc. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (“Respondent’s <tropar.us> domain name is identical to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the generic top-level domain “.us.”  The addition of a generic top-level domain does not add any distinguishing characteristics to a domain name because it is a required feature in every domain name.”). 

 

The Panel finds that Complainant satisfies the first element of Paragraph 4(a) as the Domain Name is identical to the Complainant’s mark. 

 

(2)  Rights or Legitimate Interests

 

Complainant asserts that the Respondent is not, and has not been, known by the Domain Name.  Respondent does not dispute this statement.  Complainant further offers evidence that Respondent has no valid trademark rights in the mark because Complainant established rights to the mark as early as 1999.  Additionally, Complainant offers evidence that before Respondent complied with the cease-and-desist notice he had been free-riding off of Complainant’s goodwill by advertising competing products and services under the Domain Name.[2]  Respondent stipulates to these assertions and offers no evidence in support of an existing legitimate use for the Domain Name. 

 

Accordingly, Complainant has established that Respondent lacks rights or a legitimate interest in the domain name.

 

(3)  Registration and Use in Bad Faith

 

Respondent has stipulated to Complainant’s contention of bad faith registration.  Furthermore, Respondent does not substantively proffer a justification for registering Complainant’s mark as a Domain Name.[3]  Respondent registered the Domain Name in bad faith because he knew about Complainant’s rights in the mark, and registered the identical Domain Name.  See Network Solutions, LLC v. Terry Wang, D2004-0675 (WIPO Oct. 25, 2004) (finding bad faith where “Complainant’s NETWORK SOLUTIONS mark was registered and used for many years prior to Respondent’s registration of the disputed domain name” thereby establishing actual or constructive notice of Complainant’s trademark rights with no justification); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (“The fact that Respondent has taken essentially Complain[ant's] mark as its domain name is evidence of bad faith.”).  Respondent does not deny having actual knowledge of Complainant’s mark.  Indeed, his contention that he provided services to Complainant indicates such knowledge.

 

In addition, an archived web page submitted by Complainant shows that Respondent posted links to competing products and services under the Domain Name.  Respondent’s use of an identical domain name to advertise competing products and services constitutes bad faith use.  See Staples, Inc. v. Morgan, D2004-0537 (WIPO Sept. 20, 2004) (“[T]he Panel is persuaded that Respondent’s registration and use of the Disputed Domain Name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of . . . a company which directly competes with Complainants, constitutes bad faith and use.”); see also Pitney Bowes Inc. v. Ostanik, supra. 

 

The Panel finds that Respondent registered and used the Domain Name in bad faith.  Thus, the Complainant satisfies the third element of Paragraph 4(a). 

 

DECISION

Having established all three elements required under Paragraph 4(a) of the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <4inkjets.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Michael Albert, Panelist
Dated: December 12, 2006

 

 

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