WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lauderdale Graphics Corporation v. Jason Forth
Case No. D2008-0453
1. The Parties
Complainant is Lauderdale Graphics Corporation, Miramar, Florida, United States of America, represented internally.
Respondent is Jason Forth, Palm Beach Gardens, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2008. On March 26, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On March 26, 2008, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied 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 April 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 6, 2008.
The Center appointed Michael A. Albert as the sole panelist in this matter on May 13, 2008. 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
As Respondent failed to respond to Complainant’s contentions, the Panel finds that the assertions of fact in the Complaint are undisputed. Complainant, Lauderdale Graphics Corporation, has used the LAUDERDALE GRAPHICS mark since 1988.
Respondent registered the disputed domain name on or about January 17, 2008. The domain name resolves to a web page that offers commercial information for a competitor of Complainant in the same geographic area as Complainant.
5. Parties’ Contentions
A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. First, Complainant argues that it has common-law rights in the mark LAUDERDALE GRAPHICS by virtue of length of use of the mark in commerce, in that it operates under that trade name. As support, Complainant notes that it has been in business under this name continuously for twenty years, has satellite offices in North Carolina and Virginia, and has local, national and international customers. Complainant also provides two articles from a major South Florida newspaper describing Complainant as a leader in quality graphics art solutions. Furthermore, Complainant offers evidence of membership in two trade organizations, advertising for its services in a Miami newspaper, recognition by Hewlett-Packard for Complainant’s digital printing services, participation in trade shows in Chicago and Miami, and use of the mark on its invoices and purchase orders. Second, Complainant contends that the disputed domain name is confusingly similar to its common law mark LAUDERDALE GRAPHICS, in that it incorporates this mark in its entirety.
Complainant next contends that Respondent has no rights or legitimate interests in the disputed domain name, as he has not used the domain name in connection with a bona fide offering of goods or services, has not been commonly known by the domain name, and is not making a legitimate noncommercial or fair use of the domain name.
Complainant finally argues that the domain name was registered and is being used in bad faith, as evidenced by Respondent’s awareness of Complainant’s rights in the trademark, the fact that the domain name includes the entirety of Complainant’s mark, and Respondent’s use of the domain name to redirect users to the web site of a local competitor.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
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”.
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.
A. Identical or Confusingly Similar
A number of cases have found common law trademark rights in a complainant’s name if the name is used in trade or commerce. See, e.g., Soin International LLC v. Michael W. Solley, PrivateRegContact Admin/TECHWIPO Case No. D2007-0094 (March 7, 2007). Here, Complainant has provided sufficient evidence that the mark LAUDERDALE GRAPHICS has become distinctive of and known in connection with Complainant’s business. Particularly persuasive are (among others) the two unsolicited Florida newspaper articles describing Complainant as a leader in quality graphics art solutions. Thus, the Panel finds that Complainant has established rights in the LAUDERDALE GRAPHICS mark.
The disputed domain name is identical to Complainant’s name, with the addition of the generic top-level domain “.com”. It is well settled that addition of a generic top-level domain does not remove the confusing similarity of a domain name. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 (June 25, 2000). The Panel thus finds that the disputed domain name is confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
The Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name based on the following. First, Respondent failed to file a response, which, in appropriate circumstances after a prima facie showing by Complainant, typically suggests that a respondent lacks rights or legitimate interests as to that domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221 (December 4, 2000) (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the contested domain names).
Second, as a result of not filing a response, Respondent has failed to contradict Complainant’s evidence that Respondent has not demonstrated any of the factors under the Policy, Paragraph 4(c). Respondent is not a licensee of Complainant, nor has Respondent ever been authorized to use the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name, nor that Respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain. Instead, the domain name resolves to a webpage operated by a local competitor of Complainant. This cannot constitute a bona fide offering of services. See America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374 (December 11, 2000) (“[I]t would be unconscionable to find … a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant argues that the domain name was registered and is being used in bad faith, due to Respondent’s awareness of Complainant’s rights in the trademark, the fact that the domain name includes the entirety of Complainant’s mark, and Respondent’s use of the domain name to redirect users to the web site of a local competitor.
The Panel finds that the disputed domain name was registered and used in bad faith. Given Complainant’s long-established use of the LAUDERDALE GRAPHICS mark, Respondent’s prior work as a contractor for Complainant, and Respondent’s use of the domain name to redirect users to the web site of a competitor, the Panel finds that Respondent was aware of Complainant and its activities when he registered the domain name. See Wal-Mart Stores, Inc. v. Jeff Milchen,WIPO Case No. D2005-0130 (April 10, 2005), and cases cited (respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith).
Furthermore, the fact that the domain name includes the entire LAUDERDALE GRAPHICS mark also supports a finding of bad faith. See Wal-Mart Stores cited above; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028 (March 10, 2000); Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (February 18, 2000).
Finally, the domain name redirects to a site featuring commercial information about a local competitor. Bad faith can be shown from “trading on the value established by Complainant in its marks to attract users to a web site which includes Complainant’s” marks. Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing,WIPO Case No. D2005-0313 (June 21, 2005).
Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith under the Policy, Paragraph 4(a)(iii).
7. Decision
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 be transferred to Complainant.
Michael A. Albert
Sole Panelist
Dated: June 3, 2008
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