WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ltd Commodities, Inc. v. CostNet /Domain Manager
Case No. D2002-0031
1. The Parties
The Complainant is Ltd Commodities, Inc., incorporated under the laws of the State of Illinois, United States of America. Its principal place of business is at 2800 Lakeside Drive, Bannockburn, Illinois. The Complainant is represented by Irwin C. Alter, of the Law Offices of Alter and Weiss, Chicago, Illinois, United States of America.
The Registrarís data base identifies the Respondent as CostNet Domain Manager, Post Office Box 337-2300, San Jose, Costa Rica 1017.
2. The Domain Name and Registrar
The domain name in issue in these proceedings is <ltdcomodities.com>.
The domain name Registrar is Register.com, Inc., 575 8th Avenue, 11th Floor, New York, N.Y., United States of America 10018 ("the Registrar").
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names (ICANN) on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center on January 15, 2002 (hardcopy). Initial compliance review of the Complaint disclosed a number of formal deficiencies which were drawn to the attention of the Complainant by e-mail on January 24, 2002 , with a copy to the Respondent.
On the same date, pursuant to Paragraphs 2(a) and 4 of the Rules, the Center transmitted to Register.com, Inc by e-mail a Request for Registrar Verification. The Registrar responded by email dated January 25, 2002, stating to that date, it had not received a copy of the Complaint, confirming that the domain name <ltdcomodities.com> was registered through its company, that its records indicated that the domain name was active, and that the Policy was currently applicable to the domain name in issue. The Registrar also disclosed that the current registrant of the contested domain name was "Domain Manager". Further inquiry directed to the Registrar procured the reply that "Domain Manager" was inputted mistakenly by the registrant "CostNet" and that the two appellations were one in the same company, then identified by the Registrar as CostNet Domain Manager. In the absence of information that a correction was subsequently made in the name of the Respondent, the Respondent will be identified in this proceeding as CostNet Domain Manager.
Information in the Registrarís WHOIS data base disclosed that the domain name in issue was created on November 30, 2002 and the addresses for the Respondentís Administrative, Technical and Zone Contacts were identical, i.e. the e-mail addresses and the telephone number.
A revised Complaint submitted by Ltd Commodities, Inc. was received by e-mail on February 7, 2002 and in hardcopy on February 12, 2002.
In the period February 8 to February 28, 2002, through a number of exchanges by e-mail, the Center assisted the attorney for the Complainant in better understanding what was necessary to meet the formal requirements for a Complaint. It was accepted by the Complainantís attorney that the letters "www" should not be included as a prefix in the domain name and the Center treated the revised Complaint as so amended, without requiring the Complainant to file a third Complaint.
Having verified that the amended complaint satisfied the requirements of the Policy, the Rules and the Supplemental Rules, and having received payment of the required fee from the Complainant, the Center transmitted by e-mail the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent on March 1, 2002. A copy of the Complaint was e-mailed to the Registrar and to ICANN. The Respondent was advised that a Response was required within 20 calendar days.
As of March 25, 2002, the Center had not received a Response to the Complaint and on that date, the Center, by e-mail, notified the Complainant and Respondent of the default of the Respondent.
On April 19, 2002 this panelist was appointed by the Center, having filed an executed Statement of Acceptance and Declaration of Impartiality. On the same date, the parties were notified, by e-mail, of the appointment. A decision was to be delivered to the Center on or before May 3, 2002. The panelist has independently determined, and agrees with the assessment of the Center, that the Complaint meets the formal requirements of the Policy, the Rules and the Supplementary Rules.
The language of the administrative proceeding is English, the language of the registration agreement.
4. Factual Background
The Complainant has carried on business since 1963 in the field of catalog mail order distributorships for general merchandise, including housewares, toys and gifts.
The Complainantís services are also marketed on-line through its commercial web site at <ltdcommodities.com>.
On February 8, 2000, the United States Patent and Trademark Office granted the Complainant a registration of its service mark "LTD COMMODITIES, INC." under Registration No. 2,315,412. The services covered by this registered mark are defined as: " Catalog mail order distributorship for general merchandise including toys, jewelry, watches, housewares, luggage, clothing sports equipment, clothing, beauty products, food, tools, rugs, greeting cards, office products, furniture, crockery, dolls, puzzles, games, pans, wall hangings and other decorations, lighting, rugs, shoes and slippers, wallets, checkbooks, candles, frames, giftware, cookware, photo albums, books".
The record of the Respondentís domain name in issue was created on November 30, 2000.
5. Partiesí Contentions
The Complainantís submissions can be summarized as follows:
The Complainant has been in business since 1963 in the field of catalog mail order distributorships for general merchandise including toys, housewares and gifts.
The complainant is the owner of the United States trademark registration no. 2,315,412 for the mark "LTD COMMODITIES, Inc. in respect of the services defined in the registration as "catalog mail order distributorship for general merchandise including toys, jewelry, watches, housewares, luggage, clothing sports equipment, clothing, beauty products, food, tools, rugs, greeting cards, office products, furniture, crockery, dolls, puzzles, games, pans, wall hangings and other decorations, lighting, rugs, shoes and slippers, wallets, checkbooks, candles, frames, giftware, cookware, photo albums, books". The Complainantís registration was based on first use of its corporate name as a service mark in commerce in 1978.
The Complainant also conducts business from its commercial web site <ltdcommodities.com>. A WHOIS search discloses that the Complainantís domain name was created on May 31, 1996.
The Complainant asserts that the contested domain name is confusingly similar to the Complainantís service mark and domain name, both of which antedate the registration of the Respondentís domain name. The Respondent has taken the distinctive part of the service mark and merely deleted one letter "m", to yield a common misspelling of the word "commodities".
The Complainant says that the Respondent has no rights, or legitimate interests in the domain name <ltdcomodities.com>. The Respondent is making no use of the domain name with respect to a bona fide offering of goods or services, nor making any legitimate non-commercial or fair use of the name. Complainant has been unable to find any record which would suggest that the Respondent has in the past or present been involved with any legitimate enterprise under the domain name in issue. Nor is the domain name in issue featured on any of the commercial advertising web pages that result when the Respondentís domain is entered.
Further, the Complainant argues that the Respondentís domain name was registered and is used in bad faith.
The Respondent has not submitted a Response nor any other arguments or evidence and is in default. As provided by paragraph 14 of the Rules, this Panel may draw such inferences from Respondentís default, as it considers appropriate.
In this respect, the facts set out above, which are taken from the Complaint, will be accepted as true for these proceedings.
6. Discussion and Findings
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) that the domain name has been registered and used in bad faith.
The Complainant holds a federal registration for the service mark LTD COMMODITIES, INC. A federal registration will be presumed to have valid and protectible rights under the UDRP. See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127.
In registering the contested domain name < ltdcomodities.com>, the Respondent has taken the dominant, most recognizable and distinctive elements of the Complainantís trademark. The generic abbreviation "Inc.", the conversion to lower case lettering and the inclusion of the generic top-level domain element "com" are without legal significance. None would serve to identify a domain name. The sole difference in what was taken from the Complainantís mark is a misspelling, the omission of one of the two letters "m" from "commodities". Phonetically, the portion taken is identical to the distinctive elements of the trademark and the Complainantís domain name.
It has been repeatedly held that a domain name that contains obvious misspellings of the trademark ownerís mark is considered identical or confusingly similar. By way of example, see Encyclopaedia Britannica, Inc. v. John Zuccarini et al, WIPO Case No. D2000-0330 in which the misspelling <brtanica.com> and <britannca.com> were found to be virtually identical and confusingly similar to the Complainantís mark "BRITANNICA", also Aurora Foods Inc. v. David Paul Jaros, WIPO Case No. D2000- 0274 in which the misspelling of <duncanhine.com> was found to be confusingly similar to the trademark "DUNCAN HINES".
The Respondentís domain name is visually and phonically similar to the service mark in which the Complainant has prior rights. The Panel finds that the domain name is clearly confusingly similar to the Complainantís registered service mark. The Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
Under paragraph 4(c) of the Policy, the Respondent may demonstrate that it has rights or legitimate interests in the domain name in issue by showing that one or more of the following circumstances exist: (i) its use of, or preparations to use, the contested domain name in connection with a bona fide offering of goods or services; (ii) the fact that it has commonly been known by the domain name; and (iii) its legitimate non-commercial or fair use of the domain name. The Respondent has not provided evidence of any of such circumstances, or of any other circumstances which would suggest a right or legitimate interest. The Respondent has no prior rights to the Complainantís service mark with or without the misspelling. Nor is there any evidence to suggest that Respondent is affiliated with, or licensed by, the Complainant.
When the domain name in issue is entered, the result is not a web site which features the Respondentís name but an automatic and instant forwarding of the inquiring party to a web page hosted by <linkster.com> displaying a directory, listing nine general categories, and fifty-four subcategories, among which are products dealt in by the Complainant. A selection of any of the listings on the listings on the index page links one to services provided by Overture (formerly GoTo), the property of a company located in California and New York. Overture describes itself as the worldís leading Pay-For-Performance internet search provider. Advertisers pay Overture a sum whenever a consumer clicks on their advertisement. A notice on the initial page states that "Overture does not own this URL".
It is obvious that by adopting a domain name that is confusingly similar to the service mark of the Complainant to attract and divert persons, then using the domain name as an automatic referral of such persons to third party sites who offer, by internet advertisement, services and products like those of the Complainant, the Respondent is not conducting a legitimate business.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
There is no logical explanation for the Respondentís choice of the contested domain name other than a desire to associate it with the trademark and domain name of the Complainant. It is reasonable to conclude that in doing so, the misspelling was deliberate, an error easily made in spelling or in typing, less obvious when the pronunciation is identical. The Respondentís registration and use of the domain name appears to be an intentional attempt to attract for commercial gain, internet users to another on-line location offering services and wares of a similar character to those of the Complainant, by creating a likelihood of confusion with the Complainantís mark as to the source, affiliation or endorsement of services offered at such location. Under paragraph 4(b)(iv) of the Policy indicates that such circumstances should be considered evidence of bad faith.
The Panel determines that the Respondent acted in bad faith in registering and using the disputed domain name.
It should be noted that this is not the first occasion on which on which a domain name of the Respondent has been the subject of a domain dispute. There is a striking similarity in the modus operandi of the Respondent disclosed in the decision of, Briefing.com Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970. The facts in this earlier dispute included the misspelling of the Complainantís mark as <breifing.com> and the use of this domain name by instant and automatic referral to a search engine index page of the same third party (under its previous name GoTo.com Inc.) offering information and services comparable to those of the Complainant. In the result, the domain name was transferred to the Complainant.
The decision of the Panel is that the disputed domain name <ltdcomodities.com> is confusingly similar to the service mark "LTDCOMMODITIES, INC" in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <ltdcomodities.com> be transferred to the Complainant.
James Gordon Fogo
Dated: May 3, 2002