Spike’s Holding, LLC v. Ernest Alvarez
Claim Number: FA2110001970101
Complainant is Spike’s Holding, LLC (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Ernest Alvarez (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finishlinewest.us> registered with Dynadot, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 21, 2021; the Forum received payment on October 21, 2021.
On October 24, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <finishlinewest.us> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2021 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@finishlinewest.us. Also on October 27, 2021, 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.
A timely Response was received and determined to be complete on November 2, 2021.
On November 3, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: IDENTITY THEFT
On November 2, 2021, the Forum received email communication claiming to be from a guardian of Respondent stating that Respondent is a minor who did not register the disputed domain name and does not wish to dispute the complaint. Respondent has not provided other evidence in support of a claim of stolen identity. No information was provided stating Respondent’s age and Respondent provided no response.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
Forum Supplemental Rule 15(b) provides, “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” (emphasis added). Neither Claimant nor Respondent have requested redaction of Respondent’s identity and no redaction will be made.
In this decision, Respondent refers to the actual Registrant of the domain name.
A. Complainant
Complainant, Spike’s Holding LLC, uses its marks in connection with the sale of apparel, clothing, footwear, sports accessories, and retail store services. Complainant has registered the FINISH LINE mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,872,538, registered Jan. 10, 1995), which demonstrates its rights in the mark. The <finishlinewest.us> domain name is confusingly similar to the FINISH LINE mark as the domain name incorporates the mark, merely adding the term “west” and the “.us” top-level domain (“TLD”).
Respondent has no rights or legitimate interests in the <finishlinewest.us> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use. Instead, the disputed domain resolves to a page which purports to offer competing and/or counterfeit products.
Respondent registered or has used the <finishlinewest.us> domain name in bad faith. Respondent has a history registering infringing domain names, suggesting a pattern of bad faith. Respondent also uses the domain name to attract traffic to a webpage allegedly selling competing and/or counterfeit products. Additionally, Respondent had actual knowledge of Complainant’s rights in the FINISH LINE mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <finishlinewest.us> domain name.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant claims rights in the FINISH LINE mark through registration with the USPTO. Registration of a mark with the USPTO can demonstrate rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of registration with the USPTO (e.g., Reg. No. 1,872,538, registered Jan. 10, 1995). The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the <finishlinewest.us> domain name is confusingly similar to the FINISH LINE mark as the domain name incorporates the mark, merely adding the term “west” and the “.us” TLD. Addition of generic or descriptive terms and a TLD to a mark is generally insufficient to distinguish a domain name from the mark per Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); see also Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding, “The ccTLD “.us” designation is inconsequential to a Policy ¶ 4(a)(i) analysis.”). The Panel finds that the disputed domain name is confusingly similar to the mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <finishlinewest.us> domain name since Respondent is not commonly known by the disputed domain name. The Panel may look to available WHOIS information and consider a respondent’s assertions in determining whether a respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(iii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information identifies the registrant as "Ernest Alvarez" an no available information suggests that Respondent is known by the domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).
There is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the <finishlinewest.us> domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant claims that Respondent is not making a bona fide offering of goods or services via the <finishlinewest.us> domain name, nor a legitimate noncommercial or fair use because the disputed domain resolves to a page which purports to offer competing and/or counterfeit products. Use of a disputed domain to offer competing or counterfeit products under a complainant’s mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv). See Florists’ Transworld Delivery v. Malek, FA 676433 (Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant notes that the website resolving at the disputed domain allegedly offers shoes similar to those sold by Complainant, touting significant savings and discounts. The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial fair use to satisfy Policy ¶¶ 4(c)(ii) or (iv) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered or has used the <finishlinewest.us> domain name in bad faith based upon Respondent’s history registering domain names incorporating third party trademarks. Evidence of a respondent’s pattern of bad faith registration suggests bad faith under Policy ¶ 4(b)(ii). See Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists). Complainant claims that Respondent is a sophisticated domainer, owning various domains incorporating the marks of third parties. This is evidence of bad faith per Policy ¶ 4(b)(ii).
Complainant also argues that Respondent attracts traffic to its webpage in bad faith by allegedly selling competing and/or counterfeit products at the <finishlinewest.us> domain. Selling competing or counterfeit products under a complainant’s mark suggests bad faith attraction for commercial gain per Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). Complainant notes that the website resolving at the disputed domain allegedly offers shoes similar to those sold by Complainant, touting significant savings and discounts. This is evidence of bad faith registration and/or use per Policy ¶ 4(b)(iv).
Complainant claims that Respondent had actual or constructive knowledge of Complainant’s rights in the FINISH LINE mark when it registered the <finishlinewest.us> domain name. While constructive knowledge is insufficient, actual knowledge of a complainant’s rights in a mark suggests bad faith per Policy ¶ 4(a)(iii) and may be shown from the entirety of circumstances surrounding registration and use of the domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel finds from the name used for the domain and the use made of the name that Respondent had actual knowledge of Complainant’s mark and registered and uses the domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <finishlinewest.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
November 5, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page