IGC Entertainment Corporation v. Reveal It!
Claim Number: FA0707001042731
Complainant is IGC Entertainment Corporation (“Complainant”), represented by Ali
R. Baniasadi, of Macdonald Sager Manis LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <cokinsports.com> and <cokinssports.com>, registered with Wild West Domains, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 30, 2007.
On July 23, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <cokinsports.com> and <cokinssports.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 August 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 27, 2007 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@cokinsports.com and postmaster@cokinssports.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
On September 21, 2007, pursuant to the Arbitrator’s request, Complainant submitted additional information
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cokinsports.com> and <cokinssports.com> domain names are confusingly similar to Complainant’s DAVE COKIN mark.
2. Respondent does not have any rights or legitimate interests in the <cokinsports.com> and <cokinssports.com> domain names.
3. Respondent registered and used the <cokinsports.com> and <cokinssports.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, IGC Entertainment Corporation, is in the business of telemarketing, sports betting, and sports handicapping. Dave Cokin is a well-known sportscaster and gaming analyst who has been a popular figure in the sports news and gaming world for more than twenty years. Pursuant to a 2005 handicapping agreement with Dave Cokin, National Sports Services, Inc. (“NSS”) acquired all rights to use the DAVE COKIN mark in connection with its sports betting and other related businesses. Complainant and its parent company, iGaming Corporation, acquired NSS in 2006 and thus acquired the rights to the DAVE COKIN mark. Complainant currently uses the mark to promote “Dave Cokin” branded sports picks, which it then sells to customers from its websites, located at the <jimfeist.com>, <picksonline.com>, and <vegasonline.com> domain names.
Respondent registered the <cokinsports.com> and <cokinssports.com> domain names on April 18, 2006. The disputed domain names both resolve to a complaint website which alleges that Complainant’s business is merely a money-making scam, located at the <chokingsports.com> 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."
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 the 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:
(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.
Complainant is not required to own a trademark registration to establish rights in the DAVE COKIN mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
The Panel finds that Complainant has sufficient established common law rights in the DAVE COKIN mark through continuous and extensive use of the mark. Dave Cokin has used the mark in connection with sports news and betting services for over twenty years, and his name has become well-known in the sports gaming industry. Through Dave Cokin’s assignment of his rights in the DAVE COKIN mark to NSS, and Complainant’s subsequent acquisition of NSS, Complainant correctly asserts rights in the mark. Since acquiring NSS and the DAVE COKIN mark, Complainant has expended significant time and money in promoting its gaming business and “Dave Cokin” sports picks under the DAVE COKIN mark. Therefore, the Panel finds that Complainant’s DAVE COKIN mark has acquired secondary meaning sufficient to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s <cokinsports.com>
and <cokinssports.com>
domain names are confusingly similar to Complainant’s DAVE COKIN mark, as
both of the disputed domain names merely omit the term “DAVE” and add the
generic term “sports” onto the mark, which is clearly descriptive of the nature
of Complainant’s business. Also, the <cokinssports.com>
domain name adds the letter “s” after the word COKIN in the mark. Previous panels have found, and this Panel so
finds, that neither deleting a word from a mark, adding a descriptinve term to
a mark, nor adding miscellaneous letters to a mark distinguish a disputed
domain name from a mark so as to negate any confusing similarity under Policy ¶
4(a)(i). See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb.
Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is
confusingly similar to the complainant’s mark, where the complainant holds the
Moreover, the addition of the generic top-level domain “.com” to the disputed domain names is irrelevant, as a top-level domain is required of all domain names. Thus, the Panel finds that the <cokinsports.com> and <cokinssports.com> domain names are confusingly similar to Complainant’s DAVE COKIN mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must initially make a prima facie case to show that Respondent lacks rights and legitimate interests in the <cokinsports.com> and <cokinssports.com> domain names, and then the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names. In the instant case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
As Respondent has failed to submit a response to the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will still examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
There is nothing in the record to suggest, and Respondent’s WHOIS information does not indicate, that Respondent is commonly known by the <cokinsports.com> or <cokinssports.com> domain names, and Complainant has not authorized Respondent to use the DAVE COKIN mark for any reason. Thus, the Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent is using the <cokinsports.com> and <cokinssports.com> domain names, which are confusingly similar to Complainant’s DAVE COKIN mark, to redirect Internet users to a complaint website that alleges that Complainant’s business is a scam. Although Respondent has the right to operate a complaint website, it does not have the right to infringe on another’s mark in doing so. Respondent’s use of the disputed domain names thus does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant also asserts that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). This bad faith is first evidenced by the fact that Respondent had notice of Complainant’s rights in the DAVE COKIN mark, as it uses the mark on its complaint website to discuss sports betting and describes Complainant’s business in detail. The Panel finds that Respondent’s registration of the <cokinsports.com> and <cokinssports.com> domain names, with knowledge of Complainant’s confusingly similar mark, indicates Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Furthermore, Respondent’s use of the disputed domain names
to operate a complaint website seeking to discredit Complainant’s business as a
scam constitutes a disruption of Complainant’s business and qualifies as bad
faith registration and use under Policy ¶ 4(b)(iii). See TM Acquisition
Corp. v. S.E.A. Domains, FA 156800 (Nat.
Arb. Forum June 12, 2003) (finding the
respondent's use of the complainant's mark to redirect Internet users to a
website dedicated to criticizing the complainant was evidence that the
respondent’s domain names were registered and used in bad faith); see also Nw. Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb.
Forum Mar. 28, 2001) (“Respondent registered the domain
name for the purpose of bringing Internet users desiring to learn more about
Complainant to Respondent's site for the intended purpose of publishing
contrary and critical views of Complainant thus disrupting the business of
Complainant. Registering a domain name identical with the mark of Complainant,
for this purpose, is bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly it is Ordered that the <cokinsports.com> and <cokinssports.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 3, 2007
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