LD Products, Inc. v. Gary Lam c/o XC2
Claim Number: FA0906001265729
Complainant is LD Products, Inc. (“Complainant”), represented by Matthew
M. Thompson, of Kronenberger Burgoyne, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <4inkjetss.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 1, 2009.
On June 1, 2009, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <4inkjetss.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 June
3, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of June
23, 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@4inkjetss.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 25, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <4inkjetss.com> domain name is confusingly similar to Complainant’s 4INKJETS mark.
2. Respondent does not have any rights or legitimate interests in the <4inkjetss.com> domain name.
3. Respondent registered and used the <4inkjetss.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an Internet retailer for printer supplies and accessories, which markets its products under the 4INKJETS mark. Complainant registered the 4INKJETS mark with the United States Patent and Trademark Office (“USPTO”) on September 20, 2005 (Reg. No. 2,998,115, filed August 3, 2004). Complainant has operated its printer supplies business, and advertised its products under the 4INKJETS mark, since at least as early as 1999, and since that time Complainant has grown its business to US $27 million in sales in 2007 and US $34 million in 2008.
Respondent registered the <4inkjetss.com> domain name on July 3, 2004.
The disputed domain name resolves to a parked website that displays hyperlinks to direct competitors of Complainant.
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.
The Panel finds that Complainant has established rights in
the 4INKJETS mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. See
Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb.
Forum Apr. 14, 2006) (finding that the complainant’s registration of the
ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the
USPTO satisfied the requirement of demonstrating rights in the mark under
consideration pursuant to Policy ¶ 4(a)(i)); see also
The Panel also finds that
Complainant has sufficiently established common law rights through the secondary
meaning that Complainant’s 4INKJETS mark has acquired as a result of
Complainant’s continuous use of the mark in commerce since at least as early as
1999. See Kahn
Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum
June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark
acquired secondary meaning among local consumers sufficient to establish common
law rights where the complainant had been continuously and extensively
promoting a real estate development under the mark for several years); see also Quality Custom Cabinetry,
Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7,
2002) (finding that the complainant established common law rights in the mark
through continuous use of the mark since 1995 for the purpose of Policy ¶
4(a)(i)).
Complainant argues that
Respondent’s <4inkjetss.com>
domain name is confusingly similar to Complainant’s 4INKJETS mark pursuant to
Policy ¶ 4(a)(i).
Respondent’s disputed domain name contains Complainant’s mark in its
entirety, with only a letter “s” and the generic top-level domain (“gTLD”)
“.com” added to the end of the mark. The
Panel finds that adding a single letter “s” to a mark does not sufficiently distinguish
a domain name from a mark that it incorporates.
See Microsoft
Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the <4inkjetss.com> domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the 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.”).
Complainant contends that Respondent is neither commonly
known by, nor licensed to register, the disputed
domain name. Respondent’s WHOIS
information identifies Respondent as “Gary
Lam c/o XC2.” Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent lacks rights and
legitimate interests in the disputed domain name. See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Respondent is using the <4inkjetss.com> domain
name to display links to third-party websites that are in competition with
Complainant. Complainant contends, and
the Panel agrees, that Respondent is using the disputed domain name to collect
click-through fees from those third parties, and thus the Panel finds that
Respondent has not made a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin
Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites is neither a bona fide offering of goods or services under
Policy ¶ 4(c)(i) nor a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user); see also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <4inkjetss.com>
domain name to intentionally divert
Internet users to the associated website, which displays third-party links to competing
websites. The Panel finds that Respondent
is using the <4inkjetss.com> domain name to disrupt the business of Complainant by offering links to
competitors, and that this use is evidence of Respondent’s bad faith
registration and use of the disputed domain name 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 Disney Enters., Inc. v. Noel,
FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name
confusingly similar to Complainant's mark to divert Internet users to a
competitor's website. It is a reasonable inference that Respondent's purpose of
registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii)
[and] (iv).”).
Complainant contends
that Respondent is collecting click-through fees and attempting to profit by
creating a likelihood of confusion between Complainant’s mark and the disputed
domain name. The Panel agrees that
Respondent is collecting click-through fees as a result of its use of the
disputed domain name, and therefore finds that Respondent’s use of the disputed
domain name is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Am. Online, Inc. v. Tapia,
FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet
traffic that seeks out the <aol.tv>
domain name to a competitor’s news site.
The Panel strongly finds that appropriating Complainant’s mark to refer
customers seeking Complainant to Complainant’s competitors is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also
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 <4inkjetss.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: July 2, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum