WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ltd Commodities Inc. v. XCsquare email@example.com 225225225
Case No. D2002-1004
1. The Parties
The Complainant is Limited Commodities, Inc., of Bannockburn, Illinois, 60015, United States of America represented by the law offices of Alter and Weiss of United States of America. The Respondent is XCsquareXCsquare@hotmail.com 225225225, Moscow, NA, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names <ltdcommities.com>, <ltdcommodies.com> <ltdcommoditites.com> and <ltdcommonities.com> are registered with OnlineNIC, Inc. dba China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 29, 2002. On October 30, 2002, the Center transmitted by email to OnlineNIC, Inc. dba China-Channel.com a request for registrar verification in connection with the domain names issue. On November 1, 2002, OnlineNIC, Inc. dba China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant of the four domain names in dispute and providing the contact details for the administrative billing and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient the Complainant on November 18, 2002, and November 22, 2002, filed amendments to Paragraph viii of the Complaint.
The Center has verified that the Complaint together with the amendments satisfy the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules")
In accordance with the Rules, paragraphs 2(a) and 4(a) the Center formally notified the Respondent of the Complaint and the proceedings commenced on November 5, 2002. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 25, 2002. The Respondent did not submit any response. Accordingly the Center notified the Respondents default on November 26, 2002.
The Center appointed Mr. Clive Duncan Thorne as sole Panelist in this matter on December 4, 2002. The Panel finds that it was properly constituted. The Panel has submitted the necessary Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with the Rules, paragraph 7. The projected decision date is December 18, 2002. No administrative orders have been made by the Panel. The language of the proceedings is English. The Panel understands that the necessary fees have been paid by the Complainant.
4. Factual Background
The Complainant Ltd Commodities, Inc, has been in business since 1963, in the field of catalog mail order, distributorships for general merchandise including toys, housewares and gifts. This catalog has become very well known among consumers and costs millions of dollars each year to print, purchase, make and advertise. The Complainant also conducts business from its commercial website at "ltdcommodities.com" which has been in existence since May 31, 1996. The trade mark LTD COMMODITIES, INC is a service mark registered at the US Patent and Trademark Office registration number 2315412. Additionally the Complainant owns the mark LTD COMMODITIES, which is a protected service mark registered in the United States Patent Trademark Office, registration number 2409188. Online copies of the registration certificates are exhibited at Annex 3 to the Complaint.
In the absence of evidence or submissions to the contrary from the Respondent the Panel is prepared to accept this evidence of the Complainantís trading history and trade mark rights.
5. Partiesí Contentions
A. The Complainantís Contentions
In order to succeed in its request for an Order to transfer the domain names to the Complainant, the Complainant has the burden of proof in ensuring that each of the elements set out in paragraph 4(a) of the Policy are present. These are as follows:
(i) The Respondentís domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain names;
(iii) The Respondentís domain names have been registered and are being used in bad faith.
The Panel deals with each element in turn:
(i) The Respondentís domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Complainant contends that the Respondentís four domain names in dispute are confusingly similar to the Complainants marks LTD COMMODITIES INC and LTD COMMODITIES and to the Complainantís own domain name <ltdcommodities.com> because the Respondentís domain names are simply a common misspelling of the Complainantís marks or even a simple typographical error of the Complainantís marks and/or domain name.
(ii) The Respondent has no rights or legitimate interest in respect of the domain names
The Complainant submits that the Respondent should be considered as having no rights or legitimate interest in respect of the domain names the subject of the Complaint. The Complainant relies upon the fact that the Respondent has no registration for the marks <ltdcommities.com>, <ltdcommodies.com>, <ltdcommoditites.com> and <ltdcommonities.com> either in whole or in part and does not use these names or any of the commercial advertising web pages that result when the Respondentís domain names are entered. Furthermore the Complainant finds 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.
(iii) The Respondentís domain names have been registered and are being used in bad faith
The Complainant submits that the Respondentís domain names should be considered as having been registered and used in bad faith under paragraph 4(b) of the Policy because by registering and using the domain names the Respondent intentionally and for financial gain has attracted internet users to sites that promote online advertising and also gambling websites by creating a likelihood of confusion with the Complainantís marks as to the source, sponsorship, affiliation or endorsement of the Respondentís website or location of the product or service of the Respondentís service or location.
It also relies upon the fact that on all the sites in which the disputed domain names are involved under the heading "Popular Searches" the Complainantís name is used and listed as a "Popular Search" without permission by the Complainant. This is demonstrated by the printout exhibited as Annex 4 to the Complaint where the name of the Complainant is listed as Item 4 under the heading popular searches.
The Complainant also relies upon the fact that the Complainantís domain name <ltdcommodities.com> is of great value to those who are trying to divert or siphon off the volume or access that goes to the Complainantís domain name and that the Respondentís have paid nothing beyond a domain name registration fee which is "inconsequential" when compared to the millions of dollars the Complainant spends in advertising.
The Complainant also submits that the four disputed domain names were originally part of an earlier domain name dispute with Popular Enterprises as a result of which Popular Enterprises agreed to assign the domain names to the Complainant. It appears that the Complainant received no notice of expiration of these registrations from the Registrar as a result of which the domain names were apparently not assigned as they should have been to the Complainant and that they were "lost and picked up" by the Respondent immediately after the time to renew the domain names had expired. The Complainant asserts that it is vigilant in protecting its rights and would not have let these domain names go if it had received proper notice.
B. The Respondentís Contentions
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
(i) The Respondentís domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
Having considered the evidence of the Complainantís rights the Panel finds that all four domain names in dispute are confusingly similar to the cited trade marks and the trading name of the Complainant including the Complainantís domain name. The Panel is in no doubt that the form of each of the four domain names is confusingly similar both visually and phonetically. All four of the domain names are essentially, as it is put by the Complainant, a common misspelling of the Complainantís marks.
The Panel finds for the Complainant in respect of this element.
(ii) The Respondent has no rights or legitimate interest in respect of the domain names.
In the absence of any submissions from the Respondent the Panel accepts the Complainantís submissions. There is no evidence before the Panel of any right or legitimate interest that the Respondent may have in the domain names. The Panel finds for the Complainant in respect of this element.
(iii) The Respondentís domain names have been registered and are being used in bad faith.
In the absence of any submissions to the contrary from the Respondent the Panel accepts the Complainantís submissions. In particular the Panel finds that on the evidence there is no good reason for the use of the name of the Complainant in the copy search exhibited at Annex 4 of the Complaint. The fact that the name of the Complainant is used as a leading item in the list of "Popular Searches" is evidence of intentional conduct on the part of the Respondent to establish a link between the name of the Complainant and the domain names in dispute. In the Panelís view this is good evidence of bad faith.
The Panel also pays particular attention to the fact and finds that the Respondentís use of the domain names appears to be an attempt to, as it is put by the Complainant, "siphon off" online business from the Complainant to the Respondent.
Accordingly the Panel finds for the Complainant in respect of this element.
It follows that the Complainant has succeeded in respect of all three elements and in respect of its claim.
For all the foregoing reasons in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel Orders that the domain names <ltdcommities.com>, <ltdcommodies.com>, <ltdcommoditites.com> and <ltdcommonities.com> be transferred to the Complainant.
Clive Duncan Thorne
Dated: December 18, 2002