WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Lernco, Inc. v. Venkateshwara Distributor Private Limited Case No. D2009-1012 1. The Parties
The Complainant is Lernco, Inc. of Wilmington, Delaware, United States of America (“USA”), represented by Colucci & Umans, USA.
The Respondent is Venkateshwara Distributor Private Limited of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2009, naming Domain Admin, PrivacyProtect.Org as the respondent.
The Center transmitted its request for registrar verification to the Registrar on July 29, 2009. The Registrar replied on July 30, 2009, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the registration, that the Domain Name would remain on registrar lock until it received instructions otherwise, that the registrant was informed of the registration agreement in English, and that the Domain Name was registered by the current registrant on June 1, 2008. On the other hand, the Registrar pointed out that the respondent named in the Complaint was not the current registrant, which was Venkateshwara Distributor Private Limited. The Registrar provided the full contact details on its Whois database in respect of the Domain Name.
The Center informed the Complainant on August 4, 2009, that the registrant of the Domain Name as identified by the Registrar differed from the respondent named in the Complaint as filed. The Center also pointed out that the contact details for the Registrar in the Complaint were incorrect. The Center invited the Complainant to submit an amendment to the Complaint by August 9, 2009. The Complainant submitted an Amended Complaint on August 5, 2009.
The Center verified that the Amended Complaint satisfied the formal requirements of the UDRP, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2009. The notification was sent by email and courier to the contact addresses in the Registrar's Whois database and to postmaster@. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 31, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 1, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 4, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant owns the US registered trade marks LERNER NEW YORK for retail clothing store services and mail order catalog services featuring clothing; and LERNER for custom jewelry, handbags and a wide range of clothing.
The Respondent registered the Domain Name on June 1, 2008, and has directed to a website which is devoted to links to other websites relating to women's clothing. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to registered marks in which it has rights, namely LERNER NEW YORK and LERNER. In this connection the Complainant points out that “NYC” is a well-known abbreviation for “New York City”.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has no connection with and has not licensed the Respondent, and adds that there is no evidence of the Respondent's use or preparations to use the Domain Name or a corresponding name in connection with a bona fide offering of goods or services.
The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. It submits that the Respondent is deemed to have constructive notice of its marks and that the Respondent registered the Domain Name for no apparent reason other than to trade off the goodwill of those marks. The Complainant also points out that the Respondent has made no use of the Domain Name since registering it except for a website containing links to other websites relating to women's clothing. According to the Complainant, the Respondent has intentionally attempted to attract Internet users to the Respondent's website for commercial gain through pay-per-click revenues, by creating a likelihood of association with the Complainant's mark as to source, sponsorship, affiliation or endorsement. Finally, the Complainant draws attention to the Respondent's failure to reply to its letters of complaint.
The Complainant seeks a decision that the Domain Name be transferred to it. B. Respondent
As stated above, the Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the marks LERNER NEW YORK and LERNER.
The Panel further finds that the Domain Name is confusingly similar to these marks. The Panel notes that “NYC” is widely used as an abbreviation for “New York City” and that it is common to add an “s”, signifying the possessive, to a trade name, particularly one based on a personal name.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
The Panel finds that the Respondent has not used or made demonstrable preparations to use the Domain Name for a bona fide offering of goods or services. The Panel does not regard the use of the Domain Name for a website consisting essentially of links to other websites as an offering of goods or services within the meaning of paragraph 4(c)(i) of the UDRP. Even if it can be so regarded, the Panel is satisfied that this use is not a bona fide offering, but on the contrary is a use in bad faith in order to divert consumers through confusion with the Complainant's marks via the Respondent's site to third party websites for commercial gain in the form of click-through commissions.
The Panel is satisfied that the Respondent is not commonly known by the Domain Name. The Panel further finds that the Respondent is not making legitimate non-commercial or fair use of the Domain Name, but on the contrary is using it for commercial gain by misleadingly diverting consumers.
On the evidence, the Panel finds that there is no other basis on which the Respondent could claim a right or legitimate interest in respect of the Domain Name. The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
On the undisputed evidence, the Panel finds that the Respondent is using the Domain Name intentionally to attract Internet users to its website for commercial gain in the form of click-through commissions by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website and/or products promoted on it.
In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Name in bad faith. There is no countervailing evidence displacing this presumption. The Panel accordingly concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied. 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 the Complainant.
Jonathan Turner
Sole Panelist
Dated: September 12, 2009
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