ADMINISTRATIVE PANEL DECISION
Lifted Research Group, Inc. v. Eli Kr, Hi-Res., Ltd. - domainnamesforsale
Case No. D2008-1414
The Complainant is Lifted Research Group, Inc., of Irvine, California, United States of America (“USA”), represented by Stetina Brunda Garred & Brucker of Aliso Viejo, California, USA.
The Respondent is Eli Kr, Hi-Res., Ltd. - domainnamesforsale, of Tel Aviv, Israel.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on September 16, 2008 and in hard copy on September 19, 2008.
The Center transmitted its request for registrar verification to the Registrar on September 17, 2008. The Registrar responded on September 17, 2008, stating that the Domain Name had been placed under a locked status to prevent transfers or changes to the registration during the proceedings, that its registration agreement is in English and requires the registrant to consent to the jurisdiction of courts located in King County, Washington, USA, and that the contact information for the Domain Name could be found by doing a WhoIs lookup at the url http://whois.enom.com. The Registrar also provided its contact details for the registrant of the Domain Name.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2008. The notification by courier was rejected at the Respondent’s postal address according to the contact details held by the registrar, but the notification by email appears to have been transmitted successfully. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2008.
The Center appointed Jonathan Turner as the sole panelist in this matter on October 29, 2008. 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 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.
The Complainant has registered the trademark LIFTED RESEARCH GROUP for clothing in the USA, Canada, European Union, China, Republic of Korea, Japan, Australia and other territories. The Complainant’s sales under the mark in 2005 exceeded USD 30 million and it spent over USD 900,000 on advertising and promotion in that year.
The Complainant owned the Domain Name prior to July 2005 but inadvertently allowed its registration to expire at or about the beginning of that month. The Respondent registered the Domain Name shortly after the Complainant’s registration expired. The Domain Name now resolves to a web page containing links from which the Respondent presumably derives click-through revenue.
The Domain Name is listed as for sale on the website “www.afternic.com” with a minimum offer price of USD 265. The Complainant’s investigator submitted a question to the Respondent asking whether he could buy the Domain Name now without going through the auction process so that he could have it in time for the birthday of his son who wanted to put up a fan site. The Respondent replied stating “I am sorry, but this domain name is expensive, its price is $18,000”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to its registered mark, apart from the generic top level domain suffix which is not a distinguishing feature.
The Complainant submits that the Respondent does not have rights or legitimate interests in respect of the Domain Name. It contends that the Respondent’s use of the Domain Name for a “link farm” does not constitute a bona fide offering of goods or services. It states that the Respondent is not commonly known by the Domain Name, pointing out that this is not the name given in the contact details for the registration. It further alleges that the Respondent is making commercial use of the Domain Name with intent for commercial gain by misleading consumers and diverting them away from the Complainant. In this regard, it notes that “Lifted Research Group” is an inherently distinctive combination of words and that the Respondent must have been aware of its earlier registration of the Domain Name.
Finally, the Complainant contends that the Respondent registered and is using the Domain Name in bad faith. The Complainant alleges that the Respondent registered the Domain Name with the intention of selling it for valuable consideration exceeding the costs of registering it. The Complainant points to the reference to the sale of domain names in the Respondent’s contact details for the registration and to the Respondent’s indication to the Complainant’s investigator that the price of the Domain Name was $18,000.
The Complainant also alleges that the Respondent has engaged in a pattern of conduct of registering domain names to prevent the owners of trademarks from reflecting their marks in corresponding domain names. The Complainant identifies three examples apart from the present case and suggests that there are others amongst the 1,576 domain names registered by the Respondent.
The Complainant repeats its contention that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark. The Complainant submits that the Respondent’s provision of false contact information is further evidence of bad faith.
The Complainant requests a decision that the Domain Name be transferred to it.
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. Each of these requirements will be considered in turn below.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default in submitting a response as it considers appropriate. This includes the acceptance of plausible allegations of the Complainant which have not been disputed.
A. Identical or Confusingly Similar
It is clear that the Complainant has registered rights in the mark LIFTED RESEARCH GROUP. It is also clear that the Domain Name is effectively identical to this mark for the purposes of the Policy, since it differs from the mark only in the addition of the generic top level domain suffix, which does not constitute a distinguishing feature.
The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel is satisfied that the Respondent does not have any rights or legitimate interests in respect of the Domain Name for the purposes of the Policy. The Panel does not regard the Respondent’s use of the Domain Name for a web page of automatically generated links as being for a bona fide offering of goods or services. The Respondent is not commonly known by the Domain Name. The Respondent is not making legitimate non-commercial or fair use of the Domain Name.
On the contrary, the Respondent is making unfair commercial use of the Domain Name to obtain click-through commissions from Internet users who have been attracted to the Respondent’s website through confusion with the Complainant’s mark.
The second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent acquired the Domain Name primarily for the purpose of sale to the Complainant or a competitor of the Complainant for valuable consideration in excess of its out-of-pocket expenses.
It is clear from the name “Domainnamesforsale” used by the Respondent in its contact details for the registration that the Respondent promotes itself as a reseller of domain names. The Respondent has also advertised the Domain Name as being for sale and has indicated that it contemplates obtaining a high price for it. Furthermore, the Respondent must have known that the Complainant had allowed its registration to lapse very shortly before the Respondent registered the Domain Name and must have contemplated the possibility of selling the Domain Name back to the Complainant.
In accordance with paragraph 4(b)(i) of the Policy, this constitutes evidence that the Domain Name was registered and is being used in bad faith.
The Panel further finds that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its mark in a corresponding domain name. Given that the Domain Name is the .com equivalent of the Complainant’s corporate name and principal mark, the Panel considers that the Respondent would have realised that in all probability the Complainant had allowed the Domain Name to lapse through inadvertence, and that the Respondent’s registration of it would have the effect of blocking the Complainant from reflecting its mark in the most suitable corresponding Domain Name.
The Panel is satisfied by the other examples identified in the Complaint that the Respondent has engaged in a pattern of such conduct. In accordance with paragraph 4(b)(ii) of the Policy, this also constitutes evidence that the Domain Name was registered and is being used in bad faith.
Finally, as stated above, the Panel considers that the Respondent is using the Domain Name intentionally to attract Internet users to its website for commercial gain by creating a likelihood of association with the Complainant’s mark. This constitutes evidence that the Domain Name was registered and is being used in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
There is no evidence which might displace these presumptions. The Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the Policy is satisfied.
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.
Dated: November 12, 2008