WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ltd Commodities Inc v. Dotsan
Case No. D2002-0581
1. The Parties
The Complainant is Ltd Commodities Inc. of 2800 Lakeside Drive, Bannockburn, Illinois 60015, United States of America, represented in this proceeding by Irwin C. Alter of Alter and Weiss, 19 S La Salle Street, Suite 1650, Chicago, Illinois 60603, United States of America.
The Respondent is Dotsan, 35-37 Sunder Mahal, Mumbai, IN 400021, India.
2. The Domain Name and Registrar
The domain name on which the Complaint is based is <lakesidecollections.com>.
The Registrar with which the domain names are registered is BulkRegister.com, 10 East Baltimore Street, Suite 1500, Baltimore, MD 21202, United States of America.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), also approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") on June 27, 2002, by email and on June 21, 2002, in hardcopy.
3.3 On June 25, 2002, the Center acknowledged receipt of the Complaint and requested verification of the registration from the Registrar and this verification was received on the same date.
3.4 On June 27, 2002, the Center completed its "Formal Requirements Compliance Checklist" and on July 1, 2002, notified the Respondent of the Complaint, together with a copy of the Complaint and attachments by post-courier and by email.
3.5 Having received no Response from the Respondent within the specified time in the Notification of Complaint, the Center issued a Notification of Respondent Default on July 24, 2002.
3.6 On August 8, 2002, having received the necessary acceptance and declaration of impartiality, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The notification informed the parties that the Administrative Panel would be composed of Staniforth Ricketson, with a projected decision deadline of August 22, 2002.
3.7 The Panel finds that, throughout the above administrative stages, there has been compliance with the requirements of the Policy, Rules and Supplemental Rules and that the language of the proceeding is English (paragraph 11(a), Policy).
4. Factual Background
4.1 The following facts taken from the Complaint can be taken as established, in the absence of a Response.
4.2 The Complainant has been in business since 1963 in the field of catalog mail order distributorships for general merchandise including toys, houseware and gifts. Although not stated, it is to be assumed that its operations occur mainly, if not exclusively, in the USA.
4.3 The Complainant has a registered US service mark comprising the words THE LAKESIDE COLLECTIN, INC (Annex 3). This was filed on August 4, 1997, and registered on March 6, 2001.
4.4 According to the BulkRegister WHOIS database, the Respondent registered the domain name <lakesidecollections.com> on October 24, 2001.
5. Partiesí Contentions
The Complainant seeks the transfer of the disputed domain name to it, and in support of this contention addresses each of the elements described in paragraph 4(a) of the Policy as follows.
- With respect to the element described in paragraph 4(a)(i), the Complainant refers to its US registered service mark for "THE LAKESIDE COLLECTION, INC" and submits that the Respondentís domain name <lakesidecollections.com> is confusingly similar to it.
- With respect to the element described in paragraph 4(a)(ii), the Complainant submits that there is no evidence of any right or legitimate interest by the Respondent in the domain names. It states that the Respondent has no registration for the mark "LAKESIDE COLLECTIONS" either in whole or in part, and does not use this name on any of the commercial advertising web pages that result when the Respondentís domain name is entered. Furthermore, the Complainant states that it can find no records indicating that the Respondent is involved with any legitimate enterprise under a name identical or confusingly similar to the mark in which the Complainant has rights.
- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainant submits that the domain names were registered and used in bad faith under paragraph 4(b). Following the wording of paragraph 4(b)(iv), the Complainant asserts that the Respondent, by registering and using the domain name, the Respondent intentionally and for financial gain has attracted Internet users to online advertising and gambling web sites by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the registrantís web site or location or of a product or service on the registrantís web site or location or of a product or service on the registrantís web site or location.
As noted above, the Respondent has not filed a Response to the Complaint. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panelís attention, it proceeds to make the findings below on the basis of the material contained in the Complaint. Furthermore, under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to "draw such inferences therefrom as it considers appropriate".
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements.
6.1 That the complainant has rights in a trade or service mark with which the respondentís domain name is identical or confusingly similar
As noted in paragraph 4.3 above, the Complainant has provided evidence of its US service mark registration for the mark "THE LAKESIDE COLLECTION, INC". On the basis of this registration, therefore, the Panel is satisfied that the Complainant has shown that it has "rights" in a trade or service mark.
The next question is whether the disputed domain name is confusingly similar to the Complainantís marks. In this regard, there are some differences in the domain name, namely the deletion of the prefix "the" and the suffix "Inc"; in addition, the domain name uses the plural rather than the singular form. Nonetheless, these changes are relatively minor, and the mark and domain name remain very close. Accordingly, the Panel concludes that the domain name is confusingly similar to the Complainantís mark.
6.2 That the respondent must be shown to have no rights or legitimate interests in the Domain Name
Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:
"(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In the present proceeding, the absence of a Response means that no evidence on any of these matters has been placed before the Panel. Accordingly, the Panel accepts the Complainantís submissions that there is no evidence of circumstances that would constitute rights or legitimate interests on the Respondentís part in the disputed domain name.
6.3 That the respondent registered and is using the Domain Name in bad faith
Unlike paragraphs 4(a)(ii) and 4(c), which appear to place a burden on the Respondent to show some evidence of its legitimate rights or interest in the domain name Ė a burden which is difficult to discharge where no Response has been filed Ė paragraph 4(a)(iii) appears to require that the Complainant should show some evidence from which bad faith can be inferred. Thus, paragraph 4(b) lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:
"(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors stated in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name can amount to use in bad faith when it appears that there is no way in which such a name could ever be used legitimately in relation to a business or offering of goods or services and the identity of the Respondent remains unknown: Telstra Corporation Ltd v. Nuclear Marshmallow, WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several early Panel decisions: see, for example, Estee Lauder Inc v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 and E & J Gallo Winery v Hanna Law Firm, WIPO Case No. D2000-0615.
In present case, the Complainant has not adduced any evidence or argument on any of the matters referred in paragraph 4(b), apart from its general assertion that the intention referred to in paragraph 4(b)(iv) exists. But assertion cannot amount to evidence, and there is nothing before the Panel from which it can draw any inferences as to the bad faith or otherwise of the Respondent in registering and using the domain name. Examples of such evidence might be an offer to sell it to the Complainant, using it to divert Internet users to its web sites, or seeking to disguise the identity and whereabouts of the Respondent (as in the Telstra case). The Complaint asserts (in relation to paragraph 4(a)(ii)) that accessing the Respondentís domain name leads users to other commercial advertising on web pages that are presumably controlled by the Respondent. But the Complainant has not provided any evidence of these web pages or the advertisements, and has not referred to particular statements or material on these web pages that might allow an inference to be made that the circumstances referred to in paragraph 4(b)(iv) are present. While the Panel is entitled to draw adverse inferences from a Respondentís default in filing a Response, it still requires some evidence on which it can make a finding of bad faith for the purposes of paragraph 4(a)(iii).
In this regard, it cannot be argued (and this argument has not been put by the Complainant, in any event) that the passive holding of a domain name on its own (as in the Telstra case) can constitute bad faith registration and use. In that case, other elements were also relevant, including evidence of the difficulties that the Complainant had experienced in identifying and locating the Respondent. There is no evidence of these kinds of matters before the present Panel.
Accordingly, the Panel concludes that the Complainant has not discharged its burden in demonstrating that the Respondentís registration and use of the domain name was done in bad faith for the purposes of paragraph 4(a)(iii).
The Panel finds that the Complainant has established its case with respect to the first and second of the elements stated in paragraph 4(a) of the Policy, but not in relation to the third.
The Administrative Panel dismisses the Complaint.
Dated: August 21, 2002