LTD Commodities, LLC v. Domaincar
Claim Number: FA0604000692664
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 Domaincar (“Respondent”), Galerias 3, Zona 5 5235, Panama.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ltd-commodities.com>, <ltdcommdoties.com>, <ltdcommitdies.com>, <ltdcommoditios.com>, <ltdcommonties.com> and <ltdcomoditties.com>, registered with Capitoldomains, LLC, <ltdcomities.com>, <ltdcommadies.com> and <wwwltdcommodity.com>, registered with Belgiumdomains, LLC, and <ltdcommonidities.com>, registered with Domaindoorman, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 1, 2006.
On May 2, 2006, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <ltd-commodities.com>, <ltdcommdoties.com>, <ltdcommitdies.com>, <ltdcommoditios.com>, <ltdcommonties.com> and <ltdcomoditties.com> domain names are registered with Capitoldomains, LLC and that Respondent is the current registrant of the names. Capitoldomains, LLC has verified that Respondent is bound by the Capitoldomains, 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 May 2, 2006, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <ltdcomities.com>, <ltdcommadies.com> and <wwwltdcommodity.com> domain names are registered with Belgiumdomains, LLC and that Respondent is the current registrant of the names. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On May 2, 2006, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <ltdcommonidities.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the names. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On May 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 25, 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@ltd-commodities.com, postmaster@ltdcomities.com, postmaster@ltdcommadies.com, postmaster@ltdcommdoties.com, postmaster@ltdcommitdies.com, postmaster@ltdcommoditios.com, postmaster@ltdcommonidities.com, postmaster@ltdcommonties.com, postmaster@ltdcomoditties.com and postmaster@wwwltdcommodity.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 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ltd-commodities.com>, <ltdcomities.com>, <ltdcommadies.com>, <ltdcommdoties.com>, <ltdcommitdies.com>, <ltdcommoditios.com>, <ltdcommonidities.com>, <ltdcommonties.com>, <ltdcomoditties.com> and <wwwltdcommodity.com> domain names are confusingly similar to Complainant’s LTD COMMODITIES mark.
2. Respondent does not have any rights or legitimate interests in the <ltd-commodities.com>, <ltdcomities.com>, <ltdcommadies.com>, <ltdcommdoties.com>, <ltdcommitdies.com>, <ltdcommoditios.com>, <ltdcommonidities.com>, <ltdcommonties.com>, <ltdcomoditties.com> and <wwwltdcommodity.com> domain names.
3. Respondent registered and used the <ltd-commodities.com>, <ltdcomities.com>, <ltdcommadies.com>, <ltdcommdoties.com>, <ltdcommitdies.com>, <ltdcommoditios.com>, <ltdcommonidities.com>, <ltdcommonties.com>, <ltdcomoditties.com> and <wwwltdcommodity.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LTD Commodities, LLC, has continuously used the
LTD COMMODITIES mark in connection with a catalog mail-order business since
1963. Through its catalog, Complainant
offers general merchandise, including toys, housewares and gifts. Complainant annually spends millions of
dollars designing, printing and advertising its catalog under the LTD
COMMODITIES mark. Complainant also
operates a website at the <ltdcommodities.com> domain name (registered on
May 31, 1996).
Complainant has registered the LTD COMMODITIES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,409,188 issued November 28, 2000). Complainant has also registered variations of the mark with the USPTO, including LTD COMMODITIES, INC. (Reg. No. 2,315,412 issued February 8, 2000 and Reg. No. 2,927,697 issued February 22, 2005) and LTD COMMODITIES, LLC (Reg. No. 2,986,121 issued August 16, 2005).
Respondent registered the disputed domain names on the following dates:
<ltdcomoditties.com> on September 7, 2005, <ltdcommdoties.com>
on October 10, 2005, <wwwltdcommodity.com> on October 13, 2005, <ltdcommonties.com>
on October 16, 2005, <ltdcommadies.com> on November 11, 2005, <ltdcomities.com>
on November 13, 2005, <ltdcommoditios.com> on December 3,
2005, <ltdcommonidities.com> on December 9, 2005, <ltd-commodities.com>
on December 12, 2005, and <ltdcommitdies.com> on December 18,
2005. Respondent’s domain names each
resolve to a search engine website displaying links to various content
unrelated to 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.
Because Complainant has registered the LTD COMMODITIES mark
with the USPTO, Complainant has demonstrated its rights in the mark 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 Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Furthermore, Respondent’s domain names are confusingly
similar to Complainant’s LTD COMMODITIES mark.
The <ltd-commodities.com> domain name contains the entire
mark and merely adds a hyphen to the mark.
The <ltdcomities.com>, <ltdcommadies.com>, <ltdcommdoties.com>,
<ltdcommitdies.com>, <ltdcommoditios.com>, <ltdcommonidities.com>,
<ltdcommonties.com> and <ltdcomoditties.com> domain
names contain the predominant term of Complainant’s mark, LTD, and merely
misspell the other term of the mark, COMMODITIES. The <wwwltdcommodity.com> domain name also contains
the predominant portion of the mark and misspells the other term in the mark,
but also adds the letters “www.” The
Panel finds that none of these additions or misspellings sufficiently
distinguishes the domain names from Complainant’s LTD COMMODITIES mark, and
therefore, Respondent’s domain names are confusingly similar to Complainant’s
mark pursuant to Policy ¶ 4(a)(i). See
Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23,
2003) (“The addition of a hyphen to Complainant's mark does not create a
distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly
similar analysis.”); see also Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to the complainant’s marks); see
also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat.
Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is
confusingly similar to the complainant’s STATE FARM mark); see also Marie
Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the
letters "www" are not distinct in the "Internet world" and
thus the respondent 's <wwwmarieclaire.com> domain name is confusingly
similar to the complainant's MARIE CLAIRE trademark).
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain names. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the disputed
domain names. See BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”); see
also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Domaincar,”
and there is no other evidence in the record suggesting that Respondent is
commonly known by the disputed domain names.
Thus, Respondent has not established rights or legitimate interests in
the disputed domain names pursuant to 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 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.”).
In addition, Respondent’s <ltd-commodities.com>,
<ltdcomities.com>, <ltdcommadies.com>, <ltdcommdoties.com>,
<ltdcommitdies.com>, <ltdcommoditios.com>, <ltdcommonidities.com>,
<ltdcommonties.com>, <ltdcomoditties.com> and <wwwltdcommodity.com>
domain names resolve to a commercial search engine that displays links to
various content unrelated to Complainant.
In WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb.
Forum June 12, 2003), the respondent registered the <weddingchanel.com>
domain name and used it to redirect Internet users seeking the complainant’s
services under the WEDDING CHANNEL mark to unrelated third-party websites. The panel presumed that the respondent
received referral fees for each misdirected Internet user and held that the
respondent’s “diversionary and commercial use” of the complainant’s WEDDING
CHANNEL mark was not 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). Id. In this case, Respondent also presumably
earns click-through fees for each consumer it diverts to third-party websites
unrelated to Complainant. Therefore,
Respondent’s diversionary use of the disputes domain names is not 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 U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat.
Arb. Forum May 6, 2003) (holding that
the respondent’s use of the complainant’s mark and the goodwill surrounding
that mark as a means of attracting Internet users to an unrelated business was
not a bona fide offering of goods or services).
Respondent is using the disputed domain names, which are
confusingly similar to Complainant’s LTD COMMODITIES mark, to operate a search
engine website with links to various content unrelated to Complainant. The Panel infers that Respondent earns click-through
fees for each consumer it diverts to these other websites. In Bank of Am. Corp. v. Out Island
Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003), the panel found
that respondent’s registration and use of several domain names confusingly
similar to the complainant’s BANK OF AMERICA mark to operate search engine
websites was in bad faith.
Specifically, the panel stated that “[s]ince the disputed domain names
contain entire versions of Complainant’s marks and are used for something
completely unrelated to their descriptive quality, a consumer searching for
Complainant would become confused as to Complainant’s affiliation with the
resulting search engine website.” Id.
Likewise, Respondent is taking
advantage of consumer confusion as to the source, affiliation, sponsorship or
endorsement of the disputed domain name and profiting from the goodwill
associated with the LTD COMMODITIES mark.
Therefore, Respondent’s use of the disputed domain names constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
Moreover, several of Respondent’s domain names contain misspellings of Complainant’s LTD COMMODITIES mark. Thus, Respondent has engaged in typosquatting, which constitutes 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 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,” which was evidence that the domain name was registered and used in bad faith); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <ltd-commodities.com>, <ltdcomities.com>, <ltdcommadies.com>, <ltdcommdoties.com>, <ltdcommitdies.com>, <ltdcommoditios.com>, <ltdcommonidities.com>, <ltdcommonties.com>, <ltdcomoditties.com> and <wwwltdcommodity.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 15, 2006
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