LD Products, Inc. v. Viet tech
Claim Number: FA1212001474227
Complainant is LD Products, Inc. (“Complainant”), represented by Virginia Sanderson of Kronenberger Rosenfeld, LLP, California, USA. Respondent is Viet tech (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simplyinked.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2012; the National Arbitration Forum received payment on December 17, 2012.
On December 5, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <simplyinked.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@simplyinked.com. Also on December 20, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant was founded in 1999 and uses its domain name <simplyink.com> to retail printer supplies and accessories, including inkjet cartridges, laser toner cartridges and refill kits. Complainant uses the SIMPLYINK mark to market and sell its products, and owns a trademark registration for its SIMPLYINK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,072,648 filed March 30, 2010, registered December 20, 2011). Complainant also claims to have common law rights in the SIMPLYINK mark by pre-dating Respondent’s registration of the domain name.
Respondent registered the <simplyinked.com> domain name, which resolves to a website that is designed to defraud consumers, by purporting to sell Complainant’s printer supply products. The <simplyinked.com> domain name is confusingly similar to Complainant’s SIMPLYINK mark. Respondent has never been known by the <simplyinked.com> domain name and is not authorized to use Complainant’s mark for any purpose. Respondent lacks rights or legitimate interests in the disputed domain name. Respondent registered and uses the domain name in bad faith, as Respondent’s use of the <simplyinked.com> domain name constitutes competitive use because it disrupts Complainant’s business. Respondent profits from the goodwill attached to Complainant’s SIMPLYINK mark, as Respondent attempts to confuse consumers by offering competing products at its resolving website. Respondent was likely aware of Complainant’s prior use of the SIMPLYINK mark when it registered the <simplyinked.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the Panel notes that Respondent registered the <simplyinked.com> domain name on February 5, 2007.
Respondent registered the <simplyinked.com> domain name on February 5, 2007. Complainant has a USPTO registration for SIMPLYINK, Reg. No. 4,072,648, filed March 30, 2010, registered December 20, 2011, which claims a first use date of September, 2002. Complainant also claims common law rights to the mark dating back to 2002. However, Complainant has provided no adequate documentation or other evidence that it had developed secondary meaning in the minds of the public for the SIMPLYINK mark prior to the February 5, 2007 registration date of Respondent’s domain name.
This Panel issued an Interlocutory Order providing Complainant with a second chance to provide such evidence of common law usage prior to the February 5, 2007 domain name registration date. In response to the Order, Complainant merely reiterated its prior statement that Complainant has generated approximately $14.4M in revenue under the SIMPLYINK mark “to date”. This statement was unresponsive to the Panel’s request for additional information concerning whether Complainant had common law rights in the SIMPLYINK mark preceding February 5, 2007.
There is therefore insufficient evidence before this Panel for it to come to the conclusion that Complainant had a common law trademark in the SIMPLYINK mark as of the date of registration of the <simplyinked.com> domain name at issue.
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."
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.
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.”).
The Complainant has not sufficiently established common law rights in the SIMPLYINK mark and merely makes assertions as to its rights in the mark without offering any adequate evidence to support those assertions. Specifically, Complainant has not provided the Panel with evidence of common law rights in the SIMPLYINK mark prior to the registration of Respondent’s <simplyinked.com> domain. Accordingly, after review of the evidence offered by Complainant, the Panel concludes that the SIMPLYINK mark has not acquired secondary meaning sufficient to establish Complainant’s common law rights pursuant to Policy ¶ 4(a)(i). See Voip Review LLC v. Nokta Internet Technologies, FA1095192 (Nat. Arb. Forum Dec. 12, 2007).
Since Complainant has failed to establish rights in the mark, the Panel need not analyze the other two elements of the Policy. However, the Panel notes that this finding of lack of Complainant’s rights in SIMPLYINK as of the date of registration of Respondent’s domain name would negate any claim of bad faith registration of the domain name at issue by Respondent. See Voip Review.
Thus, the Panel finds that the Complainant has failed to satisfy Policy ¶ 4(a)(i).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <simplyinked.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: February 21, 2013
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