KSE Sportsman Media, Inc. v. Creative Technologies Group / Creative Technologies Group Inc.
Claim Number: FA2006001900103
Complainant is KSE Sportsman Media, Inc. (“Complainant”), represented by Alison Frey of Dickinson Wright PLLC, Texas, USA. Respondent is Creative Technologies Group / Creative Technologies Group Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <floridasportsmanstore.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 12, 2020; the Forum received payment on June 12, 2020.
On June 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <floridasportsmanstore.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@floridasportsmanstore.com. Also on June 15, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in FLORIDA SPORTSMAN. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark FLORIDA SPORTSMAN in connection with its online retail store selling fishing apparel and paraphernalia;
2. Complainant owns United States Patent and Trademark Office (“USPTO”) Reg. No 2,621,036, registered on September 17, 2002 for the trademark FLORIDA SPORTSMAN;
3. the disputed domain name was registered on November 22, 2016 and has been used to sell fishing goods, for a period under a Merchandising License Agreement (“Merchandising Agreement”) with Complainant, now terminated.
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights as it provides proof of its registration of the trademark FLORIDA SPORTSMAN with the USPTO, a national trademark authority.
The Panel finds the domain name confusingly similar to the trademark. The domain name merely adds to the trademark the descriptive word “store” and the gTLD, “.com”, both of which have no distinctive value (see, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The domain name registrant is “Creative Technologies Group”. There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights of its own. Rather, Complainant states that for a time Respondent was licensed to use the trademark under the Merchandising Agreement. Suitably redacted, the Complaint states that:
“… Respondent entered into [the] Merchandising Agreement with Complainant in 2017 … The agreement was terminated by Complainant for Respondent’s failure to remit royalties owed and failure to fulfill orders. … The Merchandising Agreement … was terminated by Complainant on September 17, 2019. … The sell-off period … expired December 17, 2019. … Respondent is continuing to use the Infringing Domain Name and is continuing to sell merchandise that infringes Complainant’s trademark rights on the website located at the Infringing Domain Name.
…
Although Respondent launched a website at floridasportsmanstore.com that was at one time authorized, the current activity can no longer qualify as a legitimate business interest because it is currently unauthorized and amounts to the use of an infringing trademark for a competing business. … Respondent is continuing to hold the Infringing Domain Name in order to extract monies from Complainant.”
The Panel observes that the disputed domain name was registered before execution of the Merchandising Agreement. The statements in the Complaint relevant to that timing are that:
“The registration was obtained in furtherance of the Merchandising Agreement, which is now terminated.
…
Respondent’s primary purpose for registering the Infringing Domain Name was in furtherance of the Merchandising Agreement which was entered into shortly after the registration was obtained.”
The Panel observes that the Merchandising Agreement was signed on July 1, 2017, more than seven months after the domain name was registered. Nonetheless, it is a reasonable inference that Respondent registered the disputed domain name in anticipation of an agreement with Complainant. Further, it appears that the Merchandising Agreement has been terminated and all sell-off rights have expired. Accordingly, the Panel finds that Respondent has no ongoing right or legitimate interest in the domain name and so finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name (see, for example, CrossFit, Inc. v. Yen Nguyen / CrossFit AVA, FA1806001789786 (Forum July 9, 2018); Tristar Products, Inc. v. Eli Cohen, Canadian Gift Concept, FA 1592318 (Forum Jan. 9, 2015).
The onus shifts to Respondent and in the absence of a Response, the Panel finds that Respondent has not discharged the onus and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Paragraph 4(b)(iv) above stands alone in focusing on a respondent’s motivation in using a domain name rather than registering a domain name and is apt in this case. The Panel has already found the domain name to be confusingly similar to the trademark. The resolving website exists for commercial gain and was forged under the Merchandising Agreement for the express purpose of indicating an association with Complainant and its trademark. Paragraph 4(b)(iv) is satisfied in all its elements and accordingly the Panel finds that the third and final element of the Policy has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <floridasportsmanstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 11, 2020
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