Complainant is Lifetime Assistance, Inc. of New York, United States of America (“USA”), represented by Hiscock & Barclay LLP, USA.
Respondent is Domain Asset Holdings, LLC of Potomac, Maryland, USA. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2011. On December 7, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On the same date, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2012.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on January 23, 2012. 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.
The following email communications were received from the Parties following the appointment of the Panel:
(1) On January 25, 2012 the Center forwarded an email to the Panel, which had been received by the Center from Respondent on January 13, 2012 stating, “We have already agreed to give this domain to them. Please provide me with transfer instructions”.
(2) Respondent’s further email dated January 25, 2012 stating, “We would like to give the domain to the complainant. Please advise us on how to proceed”.
(3) Respondent’s email dated January 25, 2012 sent to Complainant where it states “Since there is a pending WIPO case on the domain it has been locked by the registrar Networksolutions. I am including them on the email so they can provide more information. I think you have to reply all with a document showing that the case is being suspended and then Networksolutions will give you access to the domain. Then the final email is sent out that the case is closed by WIPO”.
(4) Complainant’s email dated January 25, 2012 stating that “If WIPO issues a hold then we will forward it, otherwise we will await the Panel's decision”.
(5) Respondent’s email dated January 26, 2012, stating “I think you have to issue it so the registrar can give you the domain”.
(6) Complainant’s email dated January 26, 2012, in which the Complainant states “Please inform the panel that there has been no settlement in this action. Lifetime Assistance, Inc. requests that the Panel issue a decision in the above-referenced matter, and renews its request for transfer of the domain name”.
(7) Respondent’s email of February 1, 2012 stating, “Could someone please advise on what needs to be done so we can give the domain to the complainant?”
4. Factual Background
Complainant’s prior registration of the Domain Name expired on October 6, 2011. Complainant inadvertently failed to renew the Domain Name’s registration at that time because the administrative contact details had listed a former employee. On that same day, Respondent registered the Domain Name.
Complainant’s business, Lifetime Assistance, Inc., commenced operating in Rochester, New York in 1978, providing housing, boarding, personal care, and vocational employment services for individuals with developmental disabilities. Complainant’s mission is to help developmentally disabled individuals become self-reliant and independent members of their respective communities.
Complainant is the owner of the US trademark registration No. 3,912,742 for LIFETIME ASSISTANCE, with a date of first use in 1978. Complainant has continuously used this mark since commencing operations in 1978, and now operates more than 50 facilities in and around Rochester, New York, serving 1800 people daily.
Complainant has used the domain name continuously since March 1999 and operates a website linked to this domain name. 5. Parties’ Contentions A. Complainant
Complainant asserts that the Domain Name is identical to a trademark in which Complainant has prior rights. Complainant’s first use of its LIFETIME ASSISTANCE trademark, and its prior ownership of the domain name as well as the Domain Name itself, predate registration of the Domain Name by Respondent, which registered the Domain Name only recently on October 6, 2011. Complainant has not authorized Respondent to use the Domain Name, nor has Complainant licensed use of its trademark to any third party. Complainant contends that the Domain Name is identical and confusingly similar to its LIFETIME ASSISTANCE trademark.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name. Complainant emphasizes that Respondent is not authorized to use Complainant’s LIFETIME ASSISTANCE trademark and that to the best of Complainant’s information and belief, Respondent has no trademark registration for the term. Respondent is not making legitimate use of the term “Lifetime Assistance” on its website. Rather than having any pre-existing rights or making legitimate use of the term, Respondent has deliberately adopted a trading symbol that is confusingly similar to Complainant’s unique trademark. Complainant asserts that Respondent’s use constitutes trademark infringement and that bad faith registration and use does not establish rights or legitimate interests in a domain name.
Complainant further states that Respondent registered the Domain Name after the Domain Name’s inadvertent expiry in 2011 and well after Complainant had established rights in the LIFETIME ASSISTANCE trademark. Complainant contends that Respondent knew or should have known of Complainant’s trademark when it registered the Domain Name and therefore had either actual or constructive knowledge of Complainant’s mark. If Respondent had undertaken any trademark or Internet-based searches, Respondent would have found not only Complainant’s trademark registration, but reference to Complainant’s use of its LIFETIME ASSISTANCE mark on the Internet.
Complainant contends that Respondent’s use of the Domain Name is nothing more than an effort to divert traffic from Complainant’s website and/or interfere with Complainant’s business. The website to which the Domain Name resolves frames another site, , which sells books about “making millions” and contains advertising links to third-party websites, none of which are sponsored by or affiliated with Complainant. Some of the links on the website refer to various charities or non-profits and Complainant urges that users might be confused into believing they are affiliated with Complainant. Respondent does not anywhere on its website use the term “Lifetime Assistance”. Instead, the website contains an upper and lower banner indicating the Domain Name is for sale. Thus, according to Complainant, the Domain Name is not being used in connection if a bona fide offering of goods or services or for legitimate fair use purposes. Additionally, Complainant states that the connection to the framed webpage and links to third-party websites diminishes and tarnishes Complainant’s pre-existing goodwill in its trademark. Moreover, Respondent’s use of the Domain Name prevents Complainant from using its LIFETIME ASSISTANCE trademark in connection with a “.com” domain name.
Complainant states that it contacted Respondent in attempt to repurchase the Domain Name in October 2011. However, Respondent indicated that the purchase price was USD 30,000, while Complainant offered USD 3,000 in an attempt to resolve the matter quickly. Respondent rejected all of Complainant’s offers. In early November, Complainant provided notice of its trademark rights to Respondent and followed with a request that Respondent cease using the Domain Name and transfer it to Complainant. Respondent failed to respond to the Complainant’s communications and Complainant states it thus had no choice but to commence this case. Complainant highlights that Respondent has a history of registering domain names in bad faith, requiring their transfer. B. Respondent
Respondent did not respond to the Complainant’s contentions. Instead, there are several email communications from Respondent in which Respondent indicates that it will transfer the Domain Name to Complainant and is awaiting transfer instructions. 6. Discussion and Findings
The Panel finds that Complainant has made out a prima facie case satisfying each of the required elements under the Policy, while Respondent has failed to contest any of the Complainant’s allegations. The Domain Name is identical to the LIFETIME ASSISTANCE trademark in which Complainant has rights. Complainant has made out that Respondent, with its very recent and unauthorized registration of the Domain Name after the Complainant prior registration inadvertently lapsed, has not established any right or legitimate interests in the Domain Name. Finally, Complainant has made out that Respondent registered and is using the Domain Name in bad faith. Respondent registered the Domain Name virtually immediately after Complainant’s registration lapsed, while any trademark or Internet based search would have easily disclosed Complainant’s trademark rights and long-established use of the Lifetime Assistance term. Moreover, Respondent used the Domain Name in connection with a parked website, while demanding USD 30,000 for sale of the Domain Name to Complainant and rejecting Complainant’s offer of USD 3,000. In view of this showing, and taking into account that Respondent has not disputed Complainant’s allegations and has been found to have violated the Policy in previous cases, the Panel finds in favor of the Complainant. 7. Decision
For 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.
Christopher S. Gibson
Sole Panelist
Dated: February 6, 2012
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