LTD Commodities, LLC v. Silmaril Ltd
Claim Number: FA0702000919450
Complainant is LTD Commodities, LLC (“Complainant”), represented by Nora
Preece, of Law Offices of Alter and Preece, 19 S.
LaSalle, Suite 1650, Chicago, IL 60603, USA. Respondent is Silmaril Ltd (“Respondent”), Kirmizi Toprak Mah Nargul S D Blok D6,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <abcdistriburing.com>, registered with Go Daddy Software, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 20, 2007.
On February 19, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <abcdistriburing.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 February 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 23, 2007 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@abcdistriburing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 26, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <abcdistriburing.com> domain name is confusingly similar to Complainant’s ABC DISTRIBUTING, LLC and ABC DISTRIBUTING, INC marks.
2. Respondent does not have any rights or legitimate interests in the <abcdistriburing.com> domain name.
3. Respondent registered and used the <abcdistriburing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LTD Commodities, LLC, operates a mail order and online catalog for wholesale distributorship of general merchandise under the ABC DISTRIBUTING, LLC and ABC DISTRIBUTING, INC marks. Complainant holds multiple United States Patent and Trademark Office (“USPTO”) registrations for the ABC DISTRIBUTING, LLC mark (Reg. No. 2,872,367 issued August 10, 2004) and the ABC DISTRIBUTING, INC mark (Reg. No. 2,549,278 issued March 19, 2002). Complainant has also registered the <abcdistributing.com> domain name for use in connection with its online catalog.
Respondent registered the <abcdistriburing.com> domain name on August 11, 2004. Respondent is using the disputed domain name to operate a website composed of generic links to third-party websites. Links include, for example, “Home Furnishings,” “Exposures Catalog” and “Watkins Products.”
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 continuously been using either the ABC DISTRIBUTING, LLC or the ABC DISTRIBUTING, INC marks in connection with is wholesale distributorship business since 1997. Complainant holds USPTO registrations for both marks. The Panel finds that Complainant has established rights in its marks pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <abcdistriburing.com> domain name
is confusingly similar to Complainant’s marks.
While the disputed domain name does not include the descriptive business
terms “LLC” or “INC,” it does reflect the most prominent elements of
Complainant’s marks, specifically the terms “ABC” and “distributing.” Respondent’s mark misspells the term
“distributing” as “distriburing,” replacing the letter “t” with the letter
“r.” Respondent’s domain name is a
misspelling of Complainant’s marks, or the result of a common typographical
error, and as such is not distinct from Complainant’s marks. Thus, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶
4(a)(i). See
Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1,
2000) (holding that the deliberate introduction of errors or changes, such as
the addition of a fourth “w” or the omission of periods or other such “generic”
typos do not change respondent’s infringement on a core trademark held by the
complainant); 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”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Through its submission, Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Previous panels, including those in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), have found that a complainant’s assertions constitute a prima facie case pursuant to the Policy and shift the burden to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names as contemplated by Policy ¶ 4(c). In this case, Respondent failed to take advantage of the opportunity to submit a Response, thus failing to provide the Panel with any evidence or arguments in support of its rights or legitimate interests. In Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), the panel stated that “based on respondent's failure to respond, it is presumed that respondent lacks all rights and legitimate interests in the disputed domain name.” This Panel concurs with the reasoning of the Am. Express Co. panel, but will nonetheless evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Respondent is using the disputed domain name to redirect Internet users to its website composed of links to third-party websites. The Panel finds that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because Respondent is not offering any goods or services of its own at its website. The Panel also finds that Respondent’s use is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because, presumably, Respondent collects pay-per-click revenues from the third-party links on its website. Thus, the Panel finds that Respondent has not established rights or legitimate interests as contemplated by Policy ¶¶ 4(c)(i) or (iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
There is no available evidence that Respondent is commonly
known by the <abcdistriburing.com> domain name. Respondent’s WHOIS information identifies
Respondent as “Silmaril ltd,” which has no obvious relationship to the disputed
domain name. Complainant is not
affiliated with or sponsoring Respondent and has not given Respondent
permission to reflect its marks in a domain name. The Panel finds that Respondent is not
commonly known by the disputed domain name and has not satisfied 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 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 the respondent was not “commonly known by”
the name “girls gon wild” or <girlsgonwild.com>).
In addition to failing to establish evidence of rights or legitimate interests under Policy ¶¶ 4(c)(i)-(iii), Respondent’s registration of a typosquatted domain name is further evidence that Respondent lacks rights or legitimate interests. The panel in IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003), described typosquatting when finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c.’” In this case, the disputed domain name replaces the letter “t” in Complainant’s marks with the letter “r” mimicking a common misspelling or typographical error. The Panel finds that Respondent’s typosquatting demonstrates further that Respondent lacks rights or legitimate interests in the disputed domain name. See Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of the complainant's mark); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <abcdistriburing.com>
domain name, which is confusingly similar to Complainant’s marks, to
redirect Internet users to its website.
Because the disputed domain name is a typosquatted version of
Complainant’s marks, Internet users seeking Complainant’s genuine website will
be redirected to Respondent’s website instead through a simple misspelling or
typographical error. Because of the
confusing similarity between the disputed domain name and Complainant’s marks,
Internet users may mistakenly believe that Respondent’s website is somehow
related to or affiliated with Complainant.
Respondent is presumably profiting from this confusion by collecting
pay-per-click referral fees. The Panel
finds that this use demonstrates bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat.
Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”); see
also Bama Rags, Inc. v.
Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where
the respondent used a misspelling of the complainant’s famous mark to attract
Internet users to a series of advertisements).
The Panel
recognizes that circumstances other than those outlined in Policy ¶¶ 4(b)(i)-(iv) can demonstrate bad faith registration and use. See
Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar.
7, 2000) (“[J]ust because Respondent’s conduct does not fall within the
‘particular’ circumstances set out in [Policy ¶ 4(b)], does not mean that the
domain names at issue were not registered in and are not being used in bad
faith.”). Specifically, Respondent has
engaged in typosquatting by registering a domain name that reflects a common
misspelling or typographical error of Complainant’s marks. The Panel finds Respondent’s typosquatting to
be further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Nat’l
Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting … is the intentional misspelling of words with [the]
intent to intercept and siphon off traffic from its intended destination, by
preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith.”); see also Zone
Labs, Inc. v. Zuccarini, FA 190613
(Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of
[the <zonelarm.com> domain name] that capitalizes on the typographical error
of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
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 <abcdistriburing.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 2, 2007
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