LTD Commodities, LLC v. Nadeem Qadir
Claim Number: FA0601000636445
Complainant is LTD Commodities, LLC (“Complainant”), represented by Irwin C. Alter, of Law Offices of Alter and Weiss, 19 S. LaSalle, Suite 1650, Chicago, IL 60603. Respondent is Nadeem Qadir (“Respondent”), P.O. Box No. 212, Dhaka, BD 21014.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwltdcommodities.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 30, 2006.
On January 27, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwltdcommodities.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 21, 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@wwwltdcommodities.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 23, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole 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:
Complainant is engaged in the business of catalog mail order distributorships for general merchandise.
Complainant has registered the LTD COMMODITIES mark with the United States Patent and Trademark Office (“USPTO”), by an application filed July 28, 1998, with registration issued November 28, 2000.
Complainant and its predecessor in interest have operated under the mark LTD COMMODITIES since 1963.
Complainant has owned and operated a website under the <ltdcommodities.com> domain name since 1996.
Respondent registered the <wwwltdcommodities.com> domain name on January 23, 2000.
Internet users who access this domain name are directed to a website featuring links to other websites offering products of Complainant’s competitors.
Respondent’s <wwwltdcommodities.com> domain name is confusingly similar to Complainant’s LTD COMMODITIES mark.
Respondent does not have any rights or legitimate interests in the domain name <wwwltdcommodities.com>.
Respondent has registered and uses the <wwwltdcommodities.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts, and Respondent does not deny, that Complainant’s LTD COMMODITIES mark has acquired sufficient secondary meaning to establish common law rights based on Complainant’s use of the mark in connection with its business. It is also undisputed that Complainant has operated under the LTD COMMODITIES mark since 1963 in connection with its mail order business, and has maintained an Internet presence using the <ltdcommodities.com> domain name since 1996. The Panel therefore determines that Complainant has established secondary meaning in the LTD COMMODITIES mark for the purpose of demonstrating common law rights in the mark under Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that a complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s <wwwltdcommodities.com> domain name incorporates Complainant’s LTD COMMODITIES mark in its entirety, with the mere removal of the space between the terms and the addition of the letters “www” to the beginning of the mark. Because spaces are not allowed in domain names, the removal of the space between the terms in Complainant’s mark does not distinguish the disputed domain name from Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical).
Additionally, the letters “www” are ubiquitous on the Internet, and Internet users may inadvertently forget to include a period between the “www” and the domain name. No evidence to the contrary appearing in the record, the Panel therefore determines that Respondent, by preceding Complainant’s mark with the letters “www”, is merely taking advantage of a typographical error commonly made by Internet users. The addition of “www” to Complainant’s mark does not, in any event, negate the confusing similarity between Respondent’s domain name and Complainant’s mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that a respondent’s domain name <wwwbankofamerica.com> is confusingly similar to a complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding that confusing similarity has been established because the prefix "www" does not differentiate the domain name <wwwneimanmarcus.com> from a complainant's NEIMAN-MARCUS mark).
For these reasons, the Panel finds that Respondent’s <wwwltdcommodities.com> domain name is confusingly similar to Complainant’s LTD COMMODITIES mark, and that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have such rights or legitimate interests under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent has no right or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest exists). Complainant here has presented a prima facie case. The Panel will therefore consider whether an evaluation of the evidence demonstrates rights or legitimate interests in Respondent under Policy ¶ 4(c).
The Panel has already found that Respondent’s <wwwltdcommodities.com> domain name is confusingly similar to Complainant’s LTD COMMODITIES mark. Complainant further alleges, without contradiction from Respondent, that Internet users who access this domain name are directed to a generic search-engine website featuring links to other websites offering products in competition with Complainant’s products. From these facts, the Panel is entitled to and does presume that Respondent receives click-through fees in exchange for diverting Internet users to such websites. Respondent’s use of the disputed domain name in this fashion is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003): “Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).” See also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003): “Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”
Moreover, there is no evidence of record in this proceeding suggesting that Respondent has ever been commonly known by the <wwwltdcommodities.com> domain name. Likewise, the WHOIS database contains no information indicating that Respondent is commonly known by the <wwwltdcommodities.com> domain name. The Panel therefore infers that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding, where “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” that this is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent makes no effort to deny Complainant’s assertion
that Respondent uses the <wwwltdcommodities.com> domain name,
which includes Complainant’s LTD COMMODITIES mark, to present Internet users
with links to other websites featuring products offered by Complainant’s
competitors. In the circumstances, it is reasonable to infer that Respondent
receives click-through fees in return for directing Internet users to such
websites. This use of the disputed
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003): “Respondent
registered and used the <my-seasons.com> domain name in bad faith
pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain
name that is confusingly similar to the MYSEASONS mark for commercial benefit
by diverting Internet users to the <thumbgreen.com> website, which sells
competing goods and services.” See
also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003): “As Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to Policy ¶ 4(b)(iv).”
Additionally, Respondent’s joinder of the letters “www” with
the beginning of Complainant’s mark is a clear attempt to capitalize on
typographical errors, and may confuse Internet users about the relationship
between Complainant and the contents of Respondent’s website. Such use of Complainant’s mark is further
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See
Black & Decker Corp.
v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3,
2003) (finding that the <wwwdewalt.com> domain name was registered to
“ensnare those individuals who forget to type the period after the ‘www’
portion of [a] web-address,” is evidence that the domain name was registered
and used in bad faith); see also
Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011
(WIPO Jan. 21, 2003).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <wwwltdcommodities.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 10, 2006
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