WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Supply Guys, Inc. v. Lonvestor
Case No. D2006-1534
1. The Parties
Complainant is Supply Guys, Inc., of Hadley, Massachusetts, United States of America (“Complainant”). Complainant is represented by O’Shea, Getz & Kosakowski, P.C., United States of America.
Respondent is Lonvestor of Torrance, California, United States of America (“Respondent”).
2. The Domain Name and Registrar
The disputed domain name <leadingedgetoner.com> (the “Disputed Domain Name”) is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2006. On December 5, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On December 5, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint met 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 Respondent of the Complaint, and the proceedings commenced on December 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on January 5, 2007.
The Center appointed Steven Auvil as the sole panelist in this matter on January 23, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant registered the domain name <leadingedgetoners.com> on April 24, 2006. According to Complainant’s federal trademark applications for LEADING EDGE TONERS, which were all filed on October 23, 2006 (more than four months after Respondent registered the Disputed Domain Name), Complainant began using its LEADING EDGE TONERS mark in interstate commerce on June 6, 2006 (for Application No. 77/027,094) for goods listed as “toner; toner cartridges” and on June 2, 2006 (for Application No. 77/027,097 (the “097 Application”)) for goods listed as “ink sticks” and (for Application No. 77/027,099 (the “099 Application”)) for goods listed as “components for laser toner cartridges, namely, replacement drums and rollers; printer parts, namely fusers, volt fusers, fuser rolls, transfer rollers, transfer belts, transfer kits transfer units, paper trays, maintenance kits, maintenance trays, drum maintenance trays, drum maintenance kits, imaging kits, imaging units, main charge grids, belt cleaner assemblies, waster cartridges, waste trays”. None of the applications have yet matured into registrations.
The Disputed Domain Name was registered on June 14, 2006, a little more than two months after Complainant registered its domain name <leadingedgetoners.com> and 12 days after Complainant’s asserted date of first use in the “097 Application” and the “099 Application”. The record indicates that the Disputed Domain Name has been, and still is, used in connection with an Internet website that links to various other affiliated Internet websites that sell printer toner cartridges and related consumables.
On September 21, 2006, counsel for Complainant sent a cease and desist letter to Respondent, demanding that Respondent immediately cease operation of the Internet website identified by the Disputed Domain Name and, in addition, transfer ownership of the Disputed Domain Name over to Complainant. According to a Declaration submitted by counsel for Complainant, Respondent never responded to the cease and desist letter and, therefore, on October 10, 2006, counsel for Complainant contacted Respondent by telephone at the number listed in the Whois report for the Disputed Domain Name. According to counsel’s Declaration, counsel had several telephone conversations with Respondent. According to counsel’s Declaration, Respondent told counsel that he was developing a website affiliated with the Disputed Domain Name for a client and also indicated that he would be willing to transfer the Disputed Domain Name to Complainant for an unspecified amount.
In a subsequent conversation with Respondent, according to Counsel’s Declaration, Respondent offered to transfer the Disputed Domain Name to Complainant for USD 2,500, which price, according to Counsel’s Declaration, Respondent indicated would cover his client’s costs to register the Disputed Domain Name, as well as costs incurred to obtain a DBA certificate and a checking account. According to counsel’s Declaration, Complainant countered with an offer of USD 300. Eventually, Complainant and Respondent ceased communicating and Complainant filed this action.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is confusingly similar to its LEADING EDGE TONER mark.
Complainant further contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, and was not licensed by Complainant to use the mark LEADING EDGE TONERS. Complainant contends that the Disputed Domain Name bears no relationship to a bona fide offering of services.
Finally, Complainant argues that Respondent has registered and used the Disputed Domain Name in bad faith. Specifically, Complainant argues that Respondent’s bad faith is reflected in the fact that Respondent purposefully created a likelihood of confusion with Complainant’s LEADING EDGE TONERS mark as to the source, sponsorship affiliation, or endorsement of Respondent’s website. Complainant also argues that Respondent’s bad faith is reflected in the fact that Respondent is attempting to attract Internet users who are attempting to purchase ink, toner and similar printer supplies and consumables from Complainant but, due to an inadvertent typing error, are being directed to Respondent’s website offering containing sponsored links for products and retailers that are in direct competition with Complainant’s products. Finally, Complainant argues that Respondent’s bad faith is reflected in the fact that Respondent sought to sell the Disputed Domain Name for an amount (USD 2,500) in excess of the out-of-pocket costs directly related to its registration.
Respondent did not respond to Complainant’s contentions.
6. Discussion and Findings
To obtain relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:
(1) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interest in the Disputed Domain Name; and
(3) that the Disputed Domain Name has been registered and used in bad faith.
In view of Respondent’s failure to submit a Response, the Panel will 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.
A. Identical or Confusingly Similar
Previous WIPO UDRP panels have held that it is appropriate to apply United States legal principles where the parties are located in the United States of America. See, e.g., State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432. Pursuant to United States trademark law, rights arise and priority over others is created in the United States of America from actual use in commerce of a designation as a mark on the corresponding goods. See McCarthy on Trademarks and Unfair Competition §§ 16:1, 16:18 (4th ed.).
Complainant has not alleged, and the Panel is not persuaded, tha the LEADING EDGE TONERS trademark was widely known at the time that Respondent registered the Disputed Domain Name only a few weeks after Complainant registered its own domain name containing the LEADING EDGE TONERS trademark and only days after Complainant’s asserted date of first use on its LEADING EDGE TONERS trademark applications. Nevertheless, the record indicates that Complainant used the LEADING EDGE TONERS trademark in commerce (June 2, 2006), prior to the date that Respondent registered the Disputed Domain Name (June 14, 2006). The Panel also finds that the LEADING EDGE TONERS trademark was and is inherently distinctive. The Panel therefore finds that Complainant holds valid common law trademark rights in the mark LEADING EDGE TONERS even though Complainant holds no United States registrations for the mark for use on the various printer consumables. It is well-settled that the Policy is applicable to unregistered trademarks. See Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 (finding that the Policy is applicable to unregistered trademarks, and quoting from Funskool (India) Ltd. v. funschool.com Corporation, WIPO Case No. D2000-0796 (“The Policy places no limitation on the operative extent of a trademark, which the Complainant must show the disputed name to be identical or confusingly similar to.”)
By failing to file a response, Respondent has not contested Complainant’s common law trademark rights in the LEADING EDGE TONERS trademark. The Panel concludes that the slight difference in the words “toners” and “toner”, and the addition of the generic top-level domain (gTLD) reference “.com” to “leadingedgetoner” are minor and of no significance. See, e.g., Advanced Comfort Inc. v. Frank Grillo, WIPO Case No. D2002-0762 (“Particularly, as in here, where the only difference between the Complainant’s mark and the domain name in dispute is the letter ‘s,’ there is no question that the Domain Name is confusingly similar to the Complainant’s registered mark.”); see also Lillian Vernon Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0611 (and other WIPO panel decisions cited therein) (finding that the addition of the generic top-level domain reference, which is necessary for a domain name to be operational, does not alter the mark).
Respondent does not dispute, and the Panel therefore finds, that the Disputed Domain Name is confusingly similar to the LEADING EDGE TONERS mark, a common law trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, paragraph 4(c).
Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Name or that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. While there is evidence in the record that Respondent claimed to be making preparations for a client to use the Disputed Domain Name (e.g., Respondent claimed that Respondent’s client incurred costs to obtain a DBA certificate and open a checking account), there is no evidence in the record that such preparations were indeed undertaken. Respondent has not submitted evidence that would support a finding that Respondent has made demonstrable preparations to use the Disputed Domain Name. Instead, Respondent elected not to file a Response and Complainant has submitted evidence indicating that the Disputed Domain Name functions as a “parked” domain name resolving to a number of third party providers of goods similar to those provided by Complainant under its mark LEADING EDGE TONERS; this is still the case as of the date of this decision.
Previous WIPO UDRP panels have found that the use of a domain name in connection with an Internet website that merely lists hyperlinks to third-party websites, including those offering goods and services that are in direct competition with a complainant’s products, is not a bona fide offering of services and is not a legitimate non-commercial or fair use of the disputed domain name. See, e.g., My Diamond Place, Ltd. v. Domains Ventures, WIPO Case No. D2005-1276 (“Complainant has also provided evidence that the Respondent has directed the disputed domain name to a website offering, among other things, advertising and sponsored links for products and retailers that are in direct competition with the Complainant’s products. The Panel is of the opinion in this case that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name.”); Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that a respondent’s diversionary use of complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods and/or services nor a legitimate noncommercial or fair use of the disputed domain names). See also Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003 (where the panel found that a respondent failed to show it had made use or demonstrably prepared to use the disputed domain name when after 17 months it had no active site and was passively holding the domain name in question).
The fact that Complainant submitted undisputed evidence that Respondent offered to sell the Disputed Domain Name to Complainant for an amount well in excess of its registration further supports the conclusion that Respondent really has no legitimate business interest in the Disputed Domain Name. See Citigroup, Inc. v. Joseph Parvin, WIPO Case No. D2002-0969 (where the panel found that an offer to sell is inconsistent with the existence of a legitimate business interest in the domain name).
For these reasons, the Panel concludes that Respondent has no rights or legitimate interest in the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Panel is persuaded that there is sufficient circumstantial evidence to support the conclusion that Respondent registered and used the Disputed Domain Name in bad faith. First, Respondent appears to have deliberately registered and commenced using the Disputed Domain Name with a view toward diverting Internet users looking to locate information about Complainant and Complainant’s ink, toner and similar printer supplies and consumables. Second, the undisputed evidence indicates that Respondent offered to sell the Disputed Domain Name to Complainant for consideration (USD 2,500) which appears to be in well excess of its out-of-pocket costs, namely registrations costs as well as the other costs Respondent said it incurred on behalf of its clients. Third, Respondent elected not to respond to the Complaint and present arguments or evidence for the Panel to consider. Fourth, the evidence indicates that the Disputed Domain Name is also being used to post advertising and sponsored links to products including printer cartridges in apparent competition with those of the Complainant, from which bad faith may be inferred. See for example Duane Morris LLP v. Unasi Inc., Case No. D2005-1313.
For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.
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 name <leadingedgetoner.com> be transferred to Complainant.
Dated: February 12, 2007