DECISION

 

Fieldturf Inc. v. Triexe Management Group Inc.

Claim Number: FA0110000100509

 

PARTIES

The Complainant is Fieldturf Inc., Montreal, Quebec, Canada (“Complainant”) represented by Richard S. Levy, of Spiegel Sohmer.  The Respondent is Triexe Management Group Inc., Fonthill, Ontario, Canada (“Respondent”) Stephen Sturgeon, of Law Offices of Stephen H. Sturgeon & Associates.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fieldturf.net>, registered with Network Solutions.

 

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.

 

The Honorable Charles K. McCotter, Jr. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 10, 2001; the Forum received a hard copy of the Complaint on October 11, 2001.

 

On October 11, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <fieldturf.net> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 October 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 31, 2001 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@fieldturf.net by e-mail.

 

A Response was received and determined to be complete on November 6, 2001.  The Response was received after the deadline of October 31, 2001.  Pursuant to ICANN Rule 5, the Panel in its discretion will consider the response in its decision.  See Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a Panel may consider a response which was one day late, and received before a Panelist was appointed and any consideration made); see also Telstra Corp. Ltd. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the Panelist).

 

Complainant’s timely Additional Submission was received on November 7, 2001.

 

On November 16, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that (1) the domain name <fieldturf.net> is identical to the Complainant’s widely used, well known and registered mark FIELDTURF; (2) Respondent has no rights or legitimate interests in the domain name; and (3)

Respondent registered and used the domain name in bad faith.

 

B. Respondent

Respondent contends that  (1) this dispute is outside the scope of the type of disputes the Policy was intended to resolve; (2) Complainant has failed to show proof of its registered trademark; (3) the <fieldturf.net> domain name is not confusingly similar to Complainant’s alleged mark; (4) Respondent has rights and legitimate interests in respect to the disputed domain name as Respondent is engaged in the sale of sports equipment and related services, including the sale and maintenance of artificial playing surfaces; (5)  the term “field turf” is used extensively in the industry and is generic; and (6) Respondent did not register and use the disputed domain name in bad faith.

 

C. Additional Submissions

Complainant, in its additional submission, argues that (1) the Policy was intended to govern cases other than those evidencing cybersquatting; (2) the evidence submitted with its Complaint (a printout from the Canadian Intellectual Property Office) is sufficient to prove its trademark; and (3) the disputed domain name <fieldturf.net> is identical to its FIELDTURF mark. 

 

FINDINGS

1.         Complainant, Fieldturf, Inc., is well-known in the sports surfacing industry for its artificial sports surfacing bearing the trademark FIELDTURF (the “FIELDTURF Product”).

 

2.         Complainant’s trademark FIELDTURF is used in association with the following goods:

Synthetic surfacing consisting of ribbons of synthetic fibers woven on a backing and partially covered by a particulate infill for the playing of soccer, American football, lacrosse, field hockey, golf and other athletic activities.

 

3.         Complainant’s trademark FIELDTURF was registered on February 2, 1998, in Canada (TMA 488,977) and on December 9, 1999, in the European Community (Reg. No. 000705152) in association with “artificial turf”.  Complainant’s mark FIELDTURF was registered on November 16, 1998, in Australia (Reg. No. 778,509).  Complainant has  filed trademark applications in the United States, Japan, Argentina, Bolivia, Chile, Columbia, Ecuador, Paraguay, Peru, Uruguay, and Venezuela.

 

4.         Complainant has used the mark since 1993 in Canada and the United States in connection with “artificial turf”.  Complainant has a web site at <fieldturf.com>.

 

5.         Complainant has 332 installations of the FIELDTURF Product worldwide, including 253 in North America.  Complainant also takes part in the major trade shows.  Many articles have appeared in newspapers relating to the FIELDTURF Product.  In 1999, articles discussing the FIELDTURF Product appeared in Time magazine and Sports Illustrated.  The legendary former football coach of the Nebraska Cornhuskers, Dr. Tom Osborne is a national spokesperson for the Complainant.

 

6.         The FIELDTURF Product has been associated with charitable endeavours.

 

7.         The FIELDTURF Product has also become well known through its association with professional sports.  For some years, NFL Properties has presented games, displays and entertainment attractions for Super Bowl fans in an area adjacent to the main stadium.  In 1999, NFL Properties chose the FIELDTURF Product as the athletic surface on which these games would take place.  In a statement issued on March 2, 2001, Complainant announced that the Green Bay Packers will install the FIELDTURF Product in their indoor practice facility. 

 

8.         As a result of the extensive, consistent and prolonged use and promotion of the trade mark FIELDTURF, as well as the commercial success of the FIELDTURF Product, the trade-mark FIELDTURF has become recognized by athletic directors, recreation and park directors, other purchasers and consumers, who immediately associate it with the Complainant’s artificial turf.

 

9.         Respondent, Triexe Management Group Inc., also sells and installs artificial sports surfacing, using the brand names OMNIGRASS and DIETERTURF. 

 

10.       Prior to registering the disputed domain name, Respondent, a direct competitor of Complainant, was aware of the extensive use by Complainant of FIELDTURF for artificial turf.

 

11.       Respondent registered the domain name <fieldturf.net> on June 30, 2000.

 

12.       Respondent has various active Web sites, namely <sportexe.com>, <omnigrass.com>, <targetgreen.com>, <practice-greens.com>, <rangeturf.com> and <dieterturf.com>.  Respondent’s Web site <fieldturf.net> does not indicate the owner of the site.  It simply indicates “iFURIA – Under construction”.

 

13.       On October 26, 2001, Respondent completed a transfer of the domain name <fieldturf.net> to its wholly owned subsidiary Sportexe Inc.  Although  Respondent transferred the domain name to Sportexe, Inc., Respondent was the holder of the domain name at the time this domain name proceeding was instituted.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Respondent contends that the Policy is narrow in scope and only applies to clear cases of cybersquatting and cyber piracy.  Paragraph 4 of the Policy sets forth the criteria for disputes under the Policy.  Each of these criteria exist here.

 

Identical and/or Confusingly Similar

The domain name <fieldturf.net>  is identical to Complainant’s registrations and applications worldwide for the mark FIELDTURF.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is likewise without legal significance since use of a gTLD is required of domain name registrants").

 

Respondent contends that the term “field turf” is a generic term extensively used in the sports industry and that any rights the Complainant may have in its trademark FIELDTURF should not prohibit the use of this generic term. Complainant’s FIELDTURF mark is not generic, as evidenced by its grant of Canadian, European Union, and Australian trademarks, which establish the presumption of validity of the mark.  

 

Respondent contends that Complainant has failed to provide sufficient evidence of registration of its trademark by not providing a formal certificate of registration or a comparable document.  Complainant has provided a print-out of the database of the Canadian Intellectual Property Office that shows the Complainant’s registration of the mark FIELDTURF.  A certified certificate of registration is not required to evidence registration of a trademark.

 

Rights or Legitimate Interests

Respondent has no rights or legitimate interests in respect of the domain name <fieldturf.net>.  Respondent=s unauthorized use of the FIELDTURF trademark undermines any legitimate interest in the web site.  See Household International, Inc. v. Cyntom Enterprises, FA 95784 (Nat. Arb. Forum November 7, 2000) (Employment of someone else=s well-known business name undermines any claims to a legitimate interest).  

 

Complainant has not licensed or permitted Respondent to use Complainant's mark, nor to apply for or use any domain name incorporating its mark.  There is no evidence that Respondent, before receiving notice of the dispute, used, or demonstrably prepared to use, the domain names in connection with a bona fide offering of services.  Nor has Respondent ever been commonly known by the disputed domain name.  Respondent has no rights or legitimate interests in respect of the domain name.  Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

 

Furthermore, passive holding of a domain name creates a presumption that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See, e.g., Flor-Jon Films, Inc. v. Ron Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name). 

 

Registration and Use in Bad Faith

In analyzing the totality of circumstances, it is evident that Respondent registered and is using the domain name in bad faith.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

 

Respondent states that “It is expected that the website will provide some generic information about the generic term “field turf” and describe some of Respondent’s products (or link to information about the products).”  Respondent is clearly attempting to attract, for commercial gain, Internet users to a web site or other on-line location by using a word, FIELDTURF, that is identical to the Complainant’s well-known registered mark FIELDTURF. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (bad faith where Respondent attracted users to its web site by using Complainant’s trademark in its domain name); AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the Respondent linked the domain name to a website that offers a number of web services); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith where Respondent linked the domain name <wwwnokia.com> to <bestoftheweb.com>).

 

In the artificial turf field, Complainant’s FIELDTURF trademark is so obviously connected with Complainant that use by someone with no connection with the Complainant suggests bad faith.  See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (the domain name is so obviously connected with Complainant and its services that its very use by someone with no connection with Complainant suggests opportunistic bad faith).  Respondent, upon registering the domain name, knew or should have known of Complainant’s established marks.  See Gallerina v. Mark Wilmhurst, D2000-0730 (WIPO Aug. 16, 2000) (finding bad faith where Respondent must have known that the domain name would probably create further confusion).

 

Further, Respondent’s registration and use of the disputed domain name supports a finding of bad faith pursuant to Policy ¶ 4(b)(iii), where Respondent, a competitor of Complainant, registered the disputed domain name in order disrupt the business of Complainant.  See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

 

Furthermore, Respondent's passive holding of the domain name, when the name is identical to the Complainant's well-known mark, is evidence of bad faith under Policy ¶ 4(a)(iii).  See The Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith). 

 

DECISION

Based upon the above findings and conclusions, I find in favor of the Complainant.  Therefore, the relief requested by the Complainant pursuant to Paragraph 4.(i) of the Policy is Granted.  The Respondent shall be required to transfer to the Complainant the domain name <fieldturf.net>.

 

 

Charles K. McCotter, Jr., Panelist

 

Dated: November 27, 2001