national arbitration forum

 

DECISION

 

LTD Commodities, LLC v. Anna Valdieri

Claim Number:  FA0509000558338

 

PARTIES

Complainant is LTD Commodities, LLC (“Complainant”), represented by Irwin C. Alter, of Law Offices of Alter and Weiss, 19 S. LaSalle, Suite 1650, Chicago, IL 60603.  Respondent is Anna Valdieri (“Respondent”), Box 245, Vienna, AT 1130.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ltdcommodities.org>, registered with Gal Communication Ltd.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 12, 2005.

 

On September 20, 2005, Gal Communication Ltd. confirmed by e-mail to the National Arbitration Forum that the <ltdcommodities.org> domain name is registered with Gal Communication Ltd. and that Respondent is the current registrant of the name.  Gal Communication Ltd. has verified that Respondent is bound by the Gal Communication Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On September 26, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 17, 2005 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@ltdcommodities.org by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 24, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

LTD COMMODITIES-U.S. Registration No. 2409188

            Goods and services: 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

 

LTD COMMODITIES, INC.-U.S. Registration No. 2315412

            Goods and services: 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.

 

LTD COMMODITIES, INC. & design-U.S. Registration No. 2927697

            Goods and services: Catalog mail order distributorship for general merchandise including toys, jewelry, watches, housewares, luggage, clothing, sports equipment, 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, and books.

 

LTD COMMODITIES LLC-U.S. Registration No. 2986121

            Goods and services: Catalog mail order distributorship for general merchandise including toys, jewelry, watches, housewares, luggage, clothing, sports equipment, leather goods, health products, catalog shopping, kitchen items, patio items, car items, fishing items, garage items, children's items, computer items, holiday items, bathroom items, camera items, hobby items, cooking items, sports items, storage items, school supplies, beauty products, accessories, food, tools, rugs, clocks, radios, cd players, electronic goods, greeting cards, office products, furniture, crockery, dolls, bedding, sheets, pillows, puzzles, games, pans, picture frames, wall hangings and other decorations, lighting, shoes and slippers, wallets, checkbooks, candles, frames, giftware, cookware, photo albums, books

 

Pending Marks:

 

LTD COMMODITIES LLC-U.S. Serial No. 78194891

            Goods and services: catalog mail order distributorship for general merchandise including toys, jewelry, watches, housewares, luggage, clothing, sports equipment, leather goods, health products, catalog shopping, kitchen items, patio items, car items, fishing items, garage items, children's items, computer items, holiday items, bathroom items, camera items, hobby items, cooking items, sports items, storage items, school supplies, beauty products, accessories, food, tools, rugs, clocks, radios, cd players, electronic items, greeting cards, office products, furniture, crockery, dolls, bedding, sheets, pillows, puzzles, games, pans, picture frames, wall hangings and other decorations, lighting, shoes and slippers, wallets, checkbooks, candles, frames, giftware, cookware, photo albums, books

 

            LTD COMMODITIES LLC-U.S. Serial No. 78194903

Goods and services: catalog mail order distributorship for general merchandise including toys, jewelry, watches, housewares, luggage, clothing, sports equipment, leather goods, health products, catalog shopping, kitchen items, patio items, car items, fishing items, garage items, children's items, computer items, holiday items, bathroom items, camera items, hobby items, cooking items, sports items, storage items, school supplies, beauty products, accessories, food, tools, rugs, clocks, radios, cd players, electronic goods, greeting cards, office products, furniture, crockery, dolls, bedding,           sheets, pillows, puzzles, games, pans, picture frames, wall hangings and other decorations, lighting, shoes and slippers, wallets, checkbooks, candles, frames, giftware, cookware, photo albums, books

 

FACTUAL AND LEGAL GROUNDS

 

            This Complaint is based on the following factual and legal grounds:

 

            In accordance with UDRP Rules, para. 3(b)(viii), specification of the Complainant’s service mark on which this Complaint is based is as follows:  On January 15, 2003 LTD Commodities, Inc. assigned its service marks to Complainant LTD COMMODITIES LLC.  The Complainant, LTD COMMODITIES LLC (formerly known as 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.  LTD COMMODITIES, INC. is a protected service mark registered in the United States Patent and Trademark Office, Registration No. 2315412.  Additionally, Complainant owns the mark LTD COMMODITIES, which is a protected service mark registered in the United States Patent and Trademark Office, Registration No. 2409188.  Complaint also has four pending service marks for LTD COMMODITIES LLC, Serial Nos. 78175441, 78194891, 78194921, 78194903.

 

a.      The domain names in dispute are confusingly similar to service marks in which Complainant has rights.

            Under the UDRP Rules, para. 3(b)(ix), the additional factual and legal grounds on which the Complaint is made are as follows:  The Respondent's domain name <ltdcommodities.org> is confusingly similar to the Complainant’s marks LTD COMMODITIES, INC. and LTD COMMODITIES, and to the Complainant’s domain name ltdcommodities.com, because the Respondent’s domain name is wholly incorporates the LTDCOMMODITIES mark of Complainant.  

 

b.      Respondent has no legitimate interests in the domain name that is the subject of this dispute.

            The Respondent should be considered as having no rights or legitimate interests in the particular domain name that is the subject of the Complaint for the following reasons.  The Respondent has no registration for the mark <ltdcommodities.org>, either in whole or in part. 

 

            Furthermore, Respondent is using the disputed domain name to divert internet traffic to a portal website that provides connections to websites offering a variety of goods and services.  The Respondents use of a confusingly similar domain name as the Complainant’s registered marks to divert internet users is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4 (c)(i); additionally, Respondent’s use is not a legitimate noncommercial or fair use pursuant to Policy ¶4 (c)(iii). 

 

            The Respondents sole purpose in deliberately registering <ltdcommodities.org> is to cause confusion with Complainants’ website and marks. 

 

            Further, Complainant finds no records indicating that the Respondent is involved with any legitimate enterprise under a name identical or confusingly similar to the marks in which the Complainant has rights. 

 

c.       Respondent registered and is using the domain name, which is the subject matter of this Complaint, in bad faith.

            The Respondent’s domain name should be considered as having been registered in bad faith under para 4(b) of the ICAAN policy because by registering the commercial domain name in which it has no rights, Respondent will intentionally attract Internet users to its own commercial sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location.  The disputed domain name was registered as a commercial site to Respondent in 2004, long after Complainant started doing business on its site ltdcommodities.com in 1996.

 

            Additionally, Respondent has intentionally registered <ltdcommodities.org> with the intent to intercept and siphon off traffic from its intended destination, by preying on Internet users, namely the Complaint’s customers, who make common typing errors.  That the now Respondent purports to be doing business as the Claimant epitomizes Respondent’s bad faith use of the contested domain.  Additionally, Respondent’s continuing use of confusingly similar typographical websites after a decision by the National Arbitration Forum against them for typosquatting, displays prima facie bad faith use of the domain in question. 

 

      In short, Respondent has registered a domain name that completely subsumes the domain name of Complainant and relies upon typographical errors to garner traffic to Respondent’s sites in order to siphon traffic away form Complainant’s site.  Complainant’s service marks, and its domain name ltdcommodities.com, are valuable assets and are of great value to those trying to siphon off of Complainant’s heavy traffic volume without having paid anything other than a domain name registration fee—an inconsequential amount when compared to the millions of dollars Complainant spends in advertising and in developing its goodwill in the marketplace.  Further, Respondent’s continued use of <ltdcommodities.org> indicates prima facie bad faith. 

 

      Complainant and its predecessor, LTD Commodities, Inc., have been very aggressive in protecting its service mark rights and pursuing domain name squatters.  To date Complainant has pursued and won over 15 domain names in dispute involving squatters on the ltdcommodities.com domain name.  LTD Commodities is a valuable name which Complainant intends to protect as necessary. 

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, LTD Commodities, LLC, (formerly known as LTD Commodities, Inc.) has operated its business in the field of catalog mail order distributorships for general merchandise including toys, housewares and gifts since 1963.  Complainant also conducts business from its commercial website at the <ltdcommodities.com> domain name since 1996. 

 

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the LTD COMMODITIES mark (Reg. No. 2,409,188 issued November 20, 2000; Reg. No. 2,315,412 issued February 8, 2000; Reg. No. 2,927,697, issued February 22, 2005 and Reg. No. 2,986,121, issued August 16, 2005).  Complainant has used the LTD COMMODITIES mark in connection with its mail order business continuously since 1963.

 

Respondent registered the disputed domain name on May 17, 2005 and is using the domain name to redirect Internet users to a portal website that provides connections to websites offering a variety of goods and services.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the LTD COMMODITIES mark through registration with the USPTO.  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

The <ltdcommodities.org> domain name is identical to Complainant’s LTD COMMODITIES mark because the domain name incorporates Complainant’s mark in its entirety with the exception of the omission of a space between “ltd” and “commodities.”  Minor typographical differences do not eliminate the identical nature of the domain name to Complainant’s mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).

 

The addition of the generic top-level domain “.org” does not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark).

 

The Panel finds Policy ¶4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Respondent does not have rights or legitimate interests in the <ltdcommodities.org> domain name.  When a complainant establishes a prima facie case pursuant to Policy ¶4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests.  Due to Respondent’s failure to respond to the Complaint, the Panel infers Respondent does not have rights or legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

 

Respondent is not commonly known by the <ltdcommodities.org> domain name.  Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

Respondent is using the <ltdcommodities.org> domain name to operate a search engine website featuring commercial links to various third party websites, through which Respondent presumably receives referral fees.  Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to divert Internet users to third party websites for Respondent’s own commercial gain does not constitute 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).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).

 

Even if Respondent was not getting “click through” fees, Respondent is still not using the site for a bona fide offering of services.

 

The Panel finds Policy ¶4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent registered the <ltdcommodities.org> domain name to disrupt Complainant’s business, because Respondent’s domain name redirects Internet users to a variety of third-party websites, some of which offer services that compete directly with those offered by Complainant.  Such a use constitutes disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶4(b)(iii) [and] (iv).”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).

 

The Panel infers Respondent receives click-through fees for diverting Internet users to various commercial websites.  Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(iv) as Respondent is using the <ltdcommodities.org> domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with complainant as to the source, sponsorship, affiliation or endorsement of its website.  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

The Panel finds Policy ¶4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ltdcommodities.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated:  November 4, 2005