Lionelville.com

The timeline behind lionelville.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Lionel L.L.C. v. BWI Domains a/k/a Domain Manager Claim Number: FA0902001246463 PARTIES Complainant is Lionel L.L.C. (“Complainant”), represented by William Finkel, New York, USA. Respondent is BWI Domains a/k/a Domain Manager (“Respondent”), Cayman Islands. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <lionelville.com>, registered with Rebel.com. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Terry F. Peppard as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 9, 2009. On February 6, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <lionelville.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On February 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@lionelville.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On March 10, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: Complainant manufactures toy trucks and trains. The LIONELVILLE trademark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,758,658, issued September 2, 2003). Respondent registered the <lionelville.com> domain name on February 18, 2006. The disputed domain name resolves to a “parked” website that lists links to websites unrelated to Complainant. Respondent’s <lionelville.com> domain name is identical to Complainant’s LIONELVILLE mark. Respondent does not have any rights to or legitimate interests in the <lionelville.com> domain name. Respondent registered and uses the <lionelville.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS (1) the domain name registered by Respondent is substantially identical to a trademark in which Complainant has rights; and (2) Respondent has no rights to or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used by Respondent in bad faith. DISCUSSION 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." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.” 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: i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and ii. Respondent has no rights or legitimate interests in respect of the domain name; and iii. the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant’s registration of the LIONELVILLE trademark with the USPTO establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The <lionelville.com> domain name includes Complainant’s LIONELVILLE mark in its entirety and merely adds the generic top-level domain (gTLD) “.com.” The domain name <lionelville.com> is therefore substantially identical to Complainant’s LIONELVILLE mark pursuant to Policy ¶ 4(a)(i). See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that a respondent’s <treeforms.com> domain name is identical to a complainant’s TREEFORMS mark). The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. If Complainant’s allegations establish such a prima facie case, the burden then shifts to Respondent to show that it does indeed have rights to or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008): It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights to or legitimate interests in the <lionelville.com> domain name pursuant to Policy ¶ 4(a)(ii). And because no response was submitted in this case, we may presume that Respondent has no rights to or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002): Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii). However, the Panel will nonetheless examine the record in consideration of the factors listed in Policy ¶ 4(c) to determine if there is any basis for concluding that Respondent has any such rights or interests. We begin by noting that there is no evidence in the record to indicate that Respondent is commonly known by the <lionelville.com> domain name. Indeed the pertinent WHOIS information identifies Respondent as “BWI Domains a/k/a Domain Manager.” We conclude therefore that Respondent has not established rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See, for example, Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.” We also observe that there is no dispute as to Complainant’s allegation to the effect that Respondent is using the <lionelville.com> domain name, which is substantially identical to Complainant’s LIONELVILLE mark, to advertise unrelated third-party websites. In the circumstances, we may infer that Respondent receives click-through fees when Internet users attempt to access the advertised sites. This is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that a respondent’s use of a disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Because Respondent’s domain name is substantially identical to Complainant’s LIONELVILLE mark, Internet users accessing Respondent’s disputed domain name may become confused as to Complainant’s possible affiliation with the disputed domain name and resulting website. And because Respondent presumably receives click-through fees for diverting Internet users to third-party websites, Respondent is attempting to profit from this confusion. Thus, Respondent’s use of the <lionelville.com> domain name constitutes bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to Respondent’s website, likely profiting from such activity); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a contested domain name to display links to various third-party websites demonstrated bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)). In addition, it appears that Respondent registered the <lionelville.com> domain name with at least constructive knowledge of Complainant’s rights in the LIONELVILLE trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002). For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). DECISION Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED. Accordingly, it is Ordered that the <lionelville.com> domain name be TRANSFERRED forthwith from Respondent to Complainant. Terry F. Peppard, Panelist Dated: March 24, 2009 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.