WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISIONLtd Commodities, Inc v. DBS Administration Pty Ltd
Case No. D2002-0681
1. The Parties
The Complainant is LTD Commodities Inc., Illinois, 60015, United States of America ("USA"). The Complainant is represented by Mr Irwin C Alter of Alter and Weiss, Chicago, Illinois 60603, USA. The Respondent is DBS Administration Pty Ltd Queensland 4001, Australia. The Respondent is represented by Justin Russom, Corporate Counsel of Level 23, 12 Creek Street, Brisbane, Queensland, 4000, Australia.
2. The Domain Names and Registrar
The domain names in issue are and . The Registrar of both names is Domain Intellect Pty Ltd of GPO Box 278, Brisbane, Queensland, 4001, Australia.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint by email on July 19, 2002, and subsequently in hard copy form on July 23, 2002. A request for Registrar verification was given by the Center on August 2, 2002. The Registrar, Domain Intellect Pty Limited, responded and confirmed that the registrant was the Respondent, DBS Administration Pty Limited.
Notification of the Complaint to the Respondent was given by email, post and fax on August 2002. A Response was received on August 20, 2002, and a Supplemental Filing by way of Reply by the Center on August 28, 2002. The Panel has discretion under the Rules to determine whether to admit and to consider the Supplemental Filing in rendering its decision. Having considered the reply the Panel is prepared to admit the Reply and to consider it in preparing its decision.
A panel consisting of Sole Panelist Mr. Clive Duncan Thorne was appointed on August 29, 2002. No other procedural Orders have been made. The Panel understands that the requisite fees have been paid to the Center. The language of the proceedings is English.
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.
The Complainant owns a service mark THE LAKESIDE COLLECTION, INC. registered in the United States; Trade Mark and Patent Office registration number 2432488 in respect of inter alia:- "catalog mail order distributorship services featuring general merchandise, namely houseware, domestics, giftware, hardware, electronics, books and media including tapes and compact discs". A copy of the Registration Certificate for this mark is annexed at Annex 4 to the Complaint.
Limited details regarding the Respondent are set out in the Response. The Respondent submits that through its subsidiary company R Pty Limited it operates an internet directory service located at "www.r" whereby advertisers pay a fee to have a short description of their business or products (together with a hyperlink to their website displayed) on the Roar website. Apparently a growing number of Internet users, looking for goods and services on the Internet, will type into their web browser the domain name describing the goods or services they are looking for, rather than going to an Internet search engine and typing in the same word as a search term. Roar does not use search terms to generate search results. Its advertising search results are segregated into predetermined categories. Accordingly the Respondent, it submits, uses domain names as quasi search terms to direct users of its Internet directory service to the categories of advertisers that may be of interest to them.
If a user types in "www." or "www." i.e. the domain names in dispute it is taken to a web page displaying certain information as set out in the print out which is annexed to the Response as Annexure B. When this has been done the user arrives at a page containing a statement at the top of the page which states:-
"Looking for the official site of "The Lakeside Collection"?
If so please click here ""/"
The Panel is prepared to accept the above facts in reaching its decision. They are not in dispute and evidence is exhibited in their support.
5. Discussion and findings
Under paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") the Complainant has the burden of proof in respect of each of the following elements:-
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) That the Respondent has registered and is using the domain name in bad faith.
The Panel proceeds to deal with each of these elements in turn.
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
In its Response the Respondent admits that the disputed domain names are similar to a trade mark or service mark in which the Complainant has rights. Accordingly the Panel does not need to deal with this point further save to find for the Complainant in respect of this element.
(ii) That the Respondent has no rights or legitimate interest in respect of the domain name.
In its Complaint the Complainant submits that the Respondent should be considered as having no rights or legitimate interest in respect of the domain names that are the subject of the Complaint for the following reasons. The Respondent has no registration for the mark "Lakeside Collection" either in whole or in part and does not use the name on any of its commercial advertising web pages that result when the Respondent's domain names are entered. Furthermore the Complainant finds no records indicating that the Respondent is involved in any legitimate enterprise under a name identical or confusingly similar to the mark in which the Complainant has rights.
By contrast the Respondent submits that the Respondent has a legitimate interest in respect of the disputed names. It refers to the Internet directory service located at "www.r" and points out that a growing number of Internet users will type into their web browser the domain name describing the goods or services they are looking for rather than going to an Internet search engine and typing in the same name word as a search term. It submits that the use by the Internet search engine of a trade marked word as a stored search term linked to a set of search results is a legitimate use of the trade marked word because the trade mark word is being used in its descriptive sense. It submits that there will be users of the directory service who know that Lakeside Collections is an online retailer but who are not necessarily interested in only using "Lakeside Collections" services but are simply looking for online retailers in general. It also relies upon the statement at the top of the printed out page "Annexure B" which it is asserted points users to the Complainant's website if that is what they are looking for.
The Panel has considered both parties�submissions and in particular the Respondent's submission with regard to the basis of its claim for legitimate interest in respect of disputed names. The Panel is however considering its decision on the basis of the Policy. In so doing, it is entitled to take into account the provisions of paragraph 4(c)(i) which provides three circumstances which in particular but without limitation if found by the Panel to be proved based upon the Panel's evaluation of all the evidence presented shall demonstrate rights or legitimate interest in the domain name. These are as follows:-
(a) before any notice to the Respondent of the dispute, the Respondent's 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
(b) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights;
(c) the Respondent is making illegitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel regards those circumstances as a good indication of what the Policy requires as indicating a right legitimate interest in the domain name.
It appears to the Panel that the circumstances pleaded by the Respondent fall outside what is envisaged by paragraph 4 (a) (ii) of the Policy. Accordingly the Panel finds for the Complainant with regard to this element.
(iii) That the Respondent has registered and is using the domain name in bad faith.
In support of its allegation of bad faith the Complainant submits that by registering and using the domain names the Respondent intentionally and for financial gain has attracted Internet users to online advertising and gambling websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Registrant's website or location or of a product or service on the Registrant's website or location.
In its response the Respondent denies that the domain names have been registered or are being used in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
The Respondent's submissions are as follows:
(a) It relies upon the US Central District Court of California in Playboy Enterprises Inc v. Netscape Communications (F Supp 2d�.. 1999WL 428233, June 24, 1999) a copy of which is set out in Annexure C as authority for the proposition that words or phrases registered as trade marks may be used without the authorisation of the owner by Internet search engine directories advertising sales practice so long as such words are not used to identify their goods or services or otherwise cause consumer confusion.
(b) It asserts that the Respondent has taken all reasonable steps to ensure that the user is taken into the Respondent's website as a result of typing either of the disputed domain names into their browser and not confused or misled into believing that the Respondent or its advertisers are in some way associated with or endorsed by the Complainant. In support of this the Respondent relies upon the displayed hyper-link to re-direct users who are looking for the Complainant's website to such a site. The Respondent asserts that these steps have been taken to avoid any possibility of creating a likelihood of confusion. It submits that even if proved by the Complainant the existence of initial interest confusion is insufficient to found "bad faith".
In its Supplemental Filing by way of Reply the Complainant deals with the issue of bad faith as follows:-
(a) It purports to distinguish the decision in Playboy Enterprises Inc �v- Netscape Communications (F.Supp 2d --- 1999 WL428233) on the basis that in that case the court required that the mark be used in its generic sense whereas in the present case the activities of the Respondent Violata (sic) of the United States Anti Cyber Squatting Consumer Protection Act 1999. The Complainant argues that the Respondent does not use the disputed terms in a generic sense.
(b) The two domain names in dispute are not being used in a generic sense. The Respondent's use of the names is not in connection with anything relating to Lakeside or Collections. It relies upon the fact that the Respondent admits that the use of the domain names is likely to attract consumers who are in fact seeking the Complainants goods and services.
Having considered the submissions by both parties the Panel takes the view that the Respondent has registered and is using the domain names in bad faith. In particular it considers that the Respondent by using the domain name has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location. This if found by the Panel to be present, is under paragraph 4(b) of the policy evidence of registration and use of the domain name in bad faith.
The Panel has taken into account the Respondent's submission that the use of the domain names by the Respondent is part of directory and advertising sales practice though there is no supporting evidence of this beyond the reference to the Playboy case referred to above. The Panel has also considered the steps which the Respondent has taken, "to avoid any possibility of creating a likelihood of confusion with the Complainants trade mark". However, the Panel does not consider that the evidence circumvents the provisions of paragraph 4(b) (iv) of the Policy. Accordingly the Panel finds that the Complainant has succeeded in showing bad faith. It follows that the Complainant has succeeded in its complaint.
6. Decision
The panel finds for the Complainant and orders that the domain names and be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Sole Panelist
Dated: October 4, 2002
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