Lynda.com Inc. v. Rocky Production
Claim Number: FA0701000886223
Complainant is Lynda.com Inc. (“Complainant”), represented by David
A.W. Wong, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lyndas.com>, registered with 000Domains.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 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@lyndas.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <lyndas.com> domain name is confusingly similar to Complainant’s LYNDA.COM mark.
2. Respondent does not have any rights or legitimate interests in the <lyndas.com> domain name.
3. Respondent registered and used the <lyndas.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lynda.com Inc., has continuously and
extensively used the LYNDA.COM mark in connection with educational materials
since 1998. Complainant is an
award-winning provider of instructional books, online training videos, CD- and
DVD-based video training, and events for creative designers, instructors,
students, and hobbyists. Complainant
primarily does business through a website at the <lynda.com> domain name,
which it registered on
Complainant has registered the LYNDA.COM mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 2,613,079 issued
Respondent registered the <lyndas.com> domain name on
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.
By virtue of its federal trademark registration, Complainant has established rights in the LYNDA.COM mark pursuant to Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The <lyndas.com> domain name contains Complainant’s entire registered LYNDA.COM mark and merely adds the letter “s.” In Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006), the panel found that the the <barnesandnobles.info> and <barnesandnobles.biz> domain names were confusingly similar to the complainant’s BARNESANDNOBLE.COM mark because the addition of the letter “s” did not negate the confusingly similar aspects of the domain names pursuant to Policy ¶ 4(a)(i)). As Respondent has done virtually the same thing with the <lyndas.com> domain name as the respondent in the Barnesandnoble.com LLC case, the Panel finds that the disputed domain name is confusingly similar to Complainant’s LYNDA.COM mark pursuant to Policy ¶ 4(a)(i). See 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).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or
legitimate interests in the <lyndas.com>
domain name. 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 Hanna-Barbera Productions, Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name); see also Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <lyndas.com> domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); see also 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”). 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 “Rocky Production,” and there is no other
evidence in the record suggesting that Respondent is commonly known by the <lyndas.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the contested domain name pursuant to Policy ¶
4(c)(ii). 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 Wells Fargo
& Co. v. Onlyne Corp. Services11, Inc.,
FA 198969 (Nat. Arb. Forum
In addition, Respondent’s <lyndas.com> domain name, which is confusingly similar to Complainant’s LYNDA.COM mark, has resolved in the past to a commercial web directory containing links to Complainant’s competitors in the educational goods and services industry. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel concluded that respondent’s registration and use of confusingly similar domain names to divert Internet users to its own website did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii), and that hosting links to the complainant’s direct competitors only reinforced that conclusion. In this case, Respondent has also diverted Internet users to its own website featuring links to Complainant’s direct competitors and likely earned pay-per-click fees. Thus, Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant 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)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s previous use of the <lyndas.com> domain name to operate a
commercial web directory with links to Complainant’s competitors provides
evidence that Respondent registered and used the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iv). In Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000), the panel held that the respondent’s
diversion of Internet users who were seeking the complainant’s website to its
own website for commercial gain created “a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, endorsement, or affiliation
of its website” and, therefore, provided evidence of bad faith registration and
use in violation of Policy ¶ 4(b)(iv). In this case, Respondent has also redirected Internet users
seeking Complainant’s products and services to its own website for commercial
gain, because Respondent likely received referral fees for each consumer
it diverted to other websites. Hence,
Respondent has taken advantage of the confusing similarity between the disputed
domain name and Complainant’s LYNDA.COM mark, and profiting from the goodwill
associated with the mark, which violates Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site).
Moreover, Respondent has
registered and used the domain name for the primary purpose of disrupting
Complainant’s business, because the contested domain name resolves to a website
with links to competing retailers. As a
result, the Panel finds that Respondent has registered and is using the
contested domain name in bad faith under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding
that the respondent registered and used the domain name <eebay.com> in
bad faith where the respondent has used the domain name to promote competing
auction sites); see also Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the
respondent has diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lyndas.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 27, 2007
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