WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ltd Commodities, Inc. v. John Internet Services, John Impex
Case No. D2002-0773
1. The Parties
The Complainant in this administrative proceeding is Ltd Commodities, Inc., a United States Corporation incorporated in the state of Illinois, United States of America ("U.S.A."). The Respondent in this administrative proceeding is John Internet Services, John Impex, Vasai East, Maharashtr, India.
2. The Domain Name and Registrar
The disputed domain name is . The Registrar of the domain name is BulkR Baltimore, MD.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
The Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 16, 2002, by email and on August 21, 2002, by hardcopy. On August 22, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On August 30, 2002, the Center received the Complainant�s Amended Complaint by email and on September 4, 2002, by hardcopy. On September 12, 2002, Notification of Respondent Default was issued. A late-filed Response was delivered by the Respondent to which the Complainant was given an opportunity to Reply. It did so. Subsequently, the Respondent delivered to the Center a further submission that the Administrative Panel declined to receive. The Administrative Panel has considered all of the information contained in the Complaint, Response, Reply, Supplemental Reply and attachments thereto.
The Administrative Panel consisting of a single member was appointed on September 17, 2002, by the Center.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
4. Factual Background
Complainant�s Factual Assertions
The following information is derived from the Complaint.
The Complainant has been in business since 1963, in the field of catalogue mail order distributorships for general merchandise including toys, housewares, and gifts. Its name is a protected service mark registered in the United States Trademark and Patent Office, Registration No. 2315412.
The Respondent has no registration for the mark "LTD COM" either in whole or in part and does not use this name on any of the web pages to which the subject domain name resolves.
The Respondent�s web page offers many similar product types to those in the Complainant�s catalogue, which causes misappropriation of customers due to the similarity of name and capitalizing on the large investment that Complainant uses for advertising. To that end, the Complainant provided to the Administrative Panel a copy of a web page for "www.."
Respondent�s Factual Assertions
The Respondent is a proprietorship firm and a member of Mundadan Group engaged in the business of manufacturing Industrial products and consumer goods, plantation industry, film industry, exports, trading and marketing since 1969. It has been actively involved in the Internet business and commercial activities since 1999.
On December 2, 1999, incorrectly asserted by the Complainant as December 12, 1999, the Respondent registered the subject domain name.
A search of Trademark Registrations shows that the Service Mark LTD COMMODITIES, INC. was registered on February 8, 2000, as Registration Number 2315412.
A search engine result for the subject domain name displays the listing of the website page to which it resolves. It does not display the Complainant�s mark.
Search engine results for Ltd Commodities, Inc., Ltd Commodities and display listings of the Complainant�s website pages and other webpages, but the search results do not display the listing of the website pages to which the subject domain name resolves.
A search of domain name registrations shows registration of the domain name , identical to the Service Mark of the Complainant; and , similar to the Service Mark of Complainant. The website pages do not show any relation to LTD COMMODITIES, INC.
The website shows it is a site of Ltd Commodities, Inc. and displays the words LTD and COMMODITIES on its pages. In the Terms And Conditions page of the site it is stated that LTD is the Service Mark of Ltd Commodities, Inc. A Trademark search for LTD does not show anything to support this claim.
The Complainant has no Service Mark registration for the subject domain name or LTDCOM or LTD COM for use as an abbreviated version of its Service Mark LTD COMMODITIES, INC.
The website to which the subject domain name resolves has thousands of web pages displaying products, information, offers, etc and has been actively involved in commercial and business activities since December 1999. The Respondent and the website being part of Mundadan Group, the name Mundadan Technologies which is responsible for all website activities and the subject domain name appears in almost all web pages except for a few pages being common to all sites in the Network.
The Respondent being a member firm of Mundadan Group the website to which the subject domain name resolves has acquired wide popularity with its active association with other sites in the Network. The website is listed or indexed on popular search engines and can be located easily by typing the subject domain name in the search box of search engines.
The Certification for Service Mark Registration Number 2315412 for LTD COMMODITIES, INC. shows that "No claim is made to the exclusive right to use �COMMODITIES, INC.� apart from the mark as shown."
The Complainant has no certification or permission to use the words "commodities", "inc." and "ltd" as Service Marks separately or in broken form or in abbreviated form.
There are thousands of Trademarks and Service Marks having the words "ltd", "commodities", "inc." and "com" as part of the Marks.
The Respondent is not in the business of catalogue mail order distributorships and has not done any catalogue mail order distributorships business using the website to which the subject domain name resolves. The Respondent is not a competitor of the Complainant.
Being a member of the Mundadan Group, the Respondent�s business and commercial interests in the website to which the subject domain devolves and which was developed as part of Mundadan Business and Commercial Network for various business and commercial activities, is mainly for marketing of products and services, export business promotion, commercial advertising and publicity, news services and marketing of industrial and consumer products including medical goods manufactured by associated companies of Mundadan Group. Most of the products and product information displayed on the website and other websites in the Network are of Corporations having high reputations and which are well established worldwide.
The website to which the subject domain resolves and other member sites in the Mundadan Business and Commercial Network market hundreds of thousands of products in various categories, groups and classifications. The majority are branded products. B2B type business is not conducted on the website. It is mainly used for commercial marketing and business promotion of products and services and has been doing so actively since December 1999.
The website to which the subject domain name resolves and other websites in the Mundadan Business and Commercial Network display products of several Fortune 500 Corporations. The products displayed for marketing are mostly of high value and many of them are in the price range of US$700 and above per unit.
Most of the products displayed for sale on the Complainant�s website are in the price range of US$5 to US$40 per unit. It can be assumed that visitors to this website are those who are on the lookout for low cost products and products in the cheaper category, quality and type. The products displayed and offered at the Complainant�s website are totally different from those displayed at the website to which the subject domain name resolves.
When the Respondent registered the subject domain name on December 2, 1999, the Complainant did not have any Service Mark Registration. The Complainant got Service Mark Registration for LTD COMMODITIES, INC. only on February 8, 2000.
When the Respondent registered the subject domain name it did not know of the existence of the Complainant.
The Respondent has used the subject domain name from December 1999, for almost 34 months continuously until this proceeding with an active and full website for business and commercial purposes displaying thousands of commercial and business web pages marketing thousands of products and services in many categories, groups and classifications.
Additional Information
The following information derives from the Complainant�s Reply.
The Complainant provided details of its communications in compliance with the Policy and says that the subject domain name is subject to the Policy.
The Respondent has provided faulty contact particulars to the Registrar which may be a reason why it has not received a copy of the Complainant�s registration for the mark LTD COMMODITIES, INC.
The Respondent sells products that are similar to those sold by the Complainant.
Prior to receiving the Response, the Complainant did not know that the domain name had been registered. The Complainant now intends to initiate a domain name dispute proceeding concerning this name.
The Complainant refers to itself as "LTD" as a shortened term for its full name.
The Complainant agrees that it has no service or trademark registration for "ltdcom."
The Respondent added a flashing icon containing the subject domain name to its website after the initiation of this proceeding.
Internet searches by the Complainant using the subject domain name did not easily reach the Respondent�s website.
5. Parties� Contentions
A. Complainant
The Complainant relies on its registration of its corporate name and says that the subject domain name is confusingly similar because it is merely an abbreviation of the Complainant�s mark.
The Respondent�s lack of a legitimate interest in the subject domain name is said to be established by the fact that the Respondent has not registered as a mark the words "LTD COM" and does not use them on its web page.
Bad faith is said to be established by the fact that the Respondent "�intentionally and for financial gain has attracted Internet users to the site 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 addition, it is asserted that the products offered on the Respondent�s web page are similar to many of the products offered by the Complainant in its catalogue and that it is likely that the Respondent knew of the Complainant because it has been in business since 1963.
B. Respondent
The Respondent asserts that there is no confusion between the subject domain name and the Complainant�s mark. It says that it makes extensive use of the subject domain name, that its registration of the subject domain name preceded the registration of the Complainant�s mark and that it has a legitimate interest in the subject domain name. Denying bad faith, the Respondent relies on its use of the subject domain name and accuses the Complainant of reverse domain name hijacking. The Respondent says that at the time it registered the subject domain name it did not know of the existence of the Complainant. It denies that it sells the same products as the Complainant and points to quality and price differentials.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondent�s documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent�s website or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant�s mark is its corporate name, in material part, "Ltd Commodities." The subject domain name contains "Ltd", but in many jurisdictions that is an official designation of incorporation. It this case "Ltd" is not and it is questionable whether it could be, a mark in and of itself. Similarly, the word "commodities" might be considered as generic. It is the combination of the two that constitutes the Complainant�s interest, but the rights of the Complainant and any possible interference with them, in large part, must relate to the word "commodities."
The Complainant associates the word "commodities" with its business of selling general merchandise. The word itself often does not relate to that type of activity, but to bulk product such as potash, coal, coffee and the like.
It is possible that "com" could be considered as an abbreviation of "commodities", but without more the relationship is not obvious.
The Complainant has not registered "ltdcom." It does not suggest that it is known by it or that it trades using this designation, although it does say that it sometimes is known as "LTD."
The Complainant contends that it need not show actual confusion, but merely a likelihood of confusion. To some extent, this is correct, but the test is objective. Actual confusion need not be shown, but a complainant must establish objectively that the domain name under review is confusingly similar to its mark.
Considered objectively, in this case it is not apparent that anyone accessing the Internet through the subject domain name would be led to believe that he or she was linking to the Complainant.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondent�s Legitimate Interest
The Complainant asserts that the Respondent�s lack of a legitimate interest in the subject domain name is illustrated by the fact that the Respondent has not registered "Ltdcom" as a mark. The Respondent has no obligation to do so. Although registration would support a legitimate interest in the subject domain name, the lack of registration does not establish a lack of legitimate interest or support that conclusion.
The Complainant says that the Respondent does not use "Ltdcom" on its web page. The Complainant also states that the Respondent added a reference to the subject domain name after the initiation of this proceeding, which could raise a question concerning the Respondent�s actual interest in the subject domain name and its bona fides, but which also could be a neutral act in the context of this case.
Although the Complainant asserts and the Respondent denies that the parties are selling the same products, that fact does not lead to a finding that the Respondent does not have a legitimate interest in the subject domain name. It is entitled to compete with the Complainant. In any event, the Complainant�s main business involves sales by catalogue.
The Respondent refers to its links to a large corporate family and to the business carried on by it in that context using the subject domain name.
On the information provided to it, the Administrative Panel cannot find that the Respondent does not have a legitimate interest in the subject domain name. It is using it in a commercial context. The fact that it may sell some products in competition with the Complainant does not lead to a conclusion that its interest is illegitimate.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
The Complainant quotes or paraphrases the Policy as a basis for the establishment of bad faith. It has an obligation to provide information on which such a finding could be based.
It asserts that the Respondent sells some products that the Complainant sells through its catalogue, but the Respondent�s web page appears to relate mainly to computer and office equipment. The Complainant does not provide information from its catalogue and says in the Complaint that it is in the business of selling general merchandise "�including toys, housewares, and gifts."
There is no evidence that the Complainant asked the Respondent to cease and desist.
There is no information that supports the allegation of confusion among members of the purchasing public.
Although the Complainant says that the Respondent must have known of the Complainant�s existence at the time it registered the subject domain name, the Respondent denies that it did so.
On the face of the Complaint there is little, if anything, to support a finding of bad faith and the Respondent has explained why it registered the subject domain name and the use to which it is put. In its subsequent filings, the Complainant refers to the addition of a reference to the subject domain name on the Respondent�s webpage after this proceeding was initiated, but as noted, while that could raise a question as to the Respondent�s bona fides, it also could be a neutral act. In the circumstances of this case, it does not lead to a finding of bad faith.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
General Comment
The Administrative Panel allowed the Respondent to file a late Response and the Complainant to deliver a Reply and a Supplemental Reply. It declined to take into account a proffered additional submission from the Respondent. The basic elements of the Administrative Panel�s findings were developed before the late Response was delivered, but it was considered to be appropriate to give the parties a full opportunity to assert their positions. The additional material was considered fully by the Administrative Panel, but did not alter its preliminary conclusions. For that reason, the decision focuses mainly on the information provided in the Complaint.
7. Decision
Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has not established its case. It is dismissed.
Although, the Complainant has not established its case, the Administrative Panel is not satisfied that the proceeding was initiated to reverse hijack the subject domain name. The Complainant carries on a business that uses "ltd" and "commodities." It has a registered mark using them and they form the basis for its corporate name. Both parties merchandize products.
Edward C. Chiasson, Q.C.
Sole Panelist
Dated: October 17, 2002
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