B.A.S.S. (IP), LLC v. Mohd Hasan
Claim Number: FA0708001072906
PARTIES
Complainant
is B.A.S.S. (IP), LLC (“Complainant”),
represented by Kristen M. Walsh, of Nixon Peabody LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bassmasters.com>, registered with Lead Networks Domains Pvt. Ltd.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
August 31, 2007; the National Arbitration Forum received a hard copy of the
Complaint on August 31, 2007. The Complaint was amended on September 21, 2007,
to list the Respondent’s name and contact information as currently found in the
Registrar’s Whois database, that is Mohd Hasan; and to select an appropriate
location of Mutual Jurisdiction, that is,
On September 19, 2007, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <bassmasters.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that the Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 September 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 17, 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@bassmasters.com by e-mail.
A timely Response was received and determined to be complete on October 17, 2007.
On October 22, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name <bassmasters.com> be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges as follows:
This
Complainant is based upon Complainant’s B.A.S.S. (IP) LLC’s federally
registered trademarks for BASSMASTER (subject of Reg. Nos. 2,368,713, 1,411,744,
and 921,984). Complainant also owns
federal registrations for the following BASSMASTER-formative marks: BASSMASTER
CLASSIC, BASSMASTER LEGENDS, BASSMASTER TOUR,
Complainant and its predecessors in interest have continuously used the mark BASSMASTER since 1996 in connection with computerized on-line informational services relating to fishing events and activities; since 1984 in connection with organizing, sponsoring and conducting fishing tournaments; and since 1968 on a magazine related to fishing.
Information about Complainant’s BASSMASTER goods and services is available on the website, <sports.espn.go.com/outdoors/bassmaster/index> (See Exhibit C), and Complainant’s BASSMASTER products can be purchased through the Internet.
The domain name <bassmasters.com> (the “disputed domain name”) is confusingly similar to Complainant’s registered trademark, BASSMASTER, because it is identical, but for, the addition of the final “s,” in accordance with ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
Since the <bassmasters.com> domain name was registered on October 17, 1996, Complainant asserts that, upon information and belief, the domain holder of the disputed domain name has made use of the identity shielding services of at least two companies to hide its true identity.
Respondent is, and has been, using the disputed domain name to redirect consumers to a commercial website containing links relating to products and services in the bass fishing industry, and includes atop its list of links Complainant’s BASSMASTER mark, in accordance with Exhibit F. When Internet users initially arrive at the <bassmasters.com> site, pop-up advertisements containing links to third-party websites appear.
Complainant alleges that there is no evidence that Respondent has been commonly known by the domain name <bassmasters.com>. Complainant asserts that it is, in no way, connected with Respondent, and that Respondent has no authority, license, permission, or other arrangement from Complainant to use its trademark BASSMASTER to identify Respondent’s domain name, website, or any products or services provided by Respondent.
Complainant further asserts that
Respondent acted in bad faith when it registered the domain name <basssmasters.com> because it had
constructive knowledge of Complainant’s registered BASSMASTER mark prior to
registering the disputed domain name, by virtue of U.S. Trademark Registration
Nos. 1,411,744 and 921,984.
Complainant lastly asserts that Respondent is diverting internet users seeking information on Complainant’s BASSMASTER products and services, to a commercial website through the use of a domain name, confusingly similar to Complainant’s BASSMASTER mark; and is thereby disrupting a portion of Complainant’s business. Complainant states that such disruption and diversion, for commercial gain, evidences registration and use in bad faith, pursuant to ICANN Policy ¶ 4(b)(iv).
B. Respondent
Respondent alleges as follows:
Respondent denies each and every allegation, submission and contention in the said Complaint and puts Complainant to strict proof, thereof.
Respondent states that “bassmaster” is such a common conjunction of words, that the Complainant cannot claim any rights to said word.
Respondent denies that he had knowledge of the Complainant’s trademarks, and puts Complainant to strict proof, thereof.
With reference to Paragraphs 5(b)(i)(ii)and (iii), Respondent denies the same and states that they have been using the privacy Whois service of the Registrar, which is a widely used practice in the domain name industry, and does not amount to any wrongdoing.
Respondent states that he is using a portal website where a person can come and search for the things they are looking for. Respondent has tie-ups with various advertisers and content providers who provide content on his website. Complainant may we (“be” sp.?) an advertiser with one of our content providers and hence their website is also linked. Respondent states that he does not need any permission to run his portal.
Respondent states that they have full legitimate interest in the domain name, as they have paid for the same and purchased it from the previous owner.
Respondent denies that he had constructive knowledge of the trademarks of Complainant, and is, in no way, disrupting the business of Complainant.
Respondent states that Complainant has failed to prove each of the three elements, as laid down by the Policy. As required under 4(a)(i), Complainant has failed to prove exclusive use of the Bass Master mark.
Respondent asserts that they have clearly proved their rights and legitimate interest in the domain name, and that they are using the domain for fair use. Respondent lastly states that no evidence of bad faith has been proved against Respondent.
FINDINGS
1. The domain name <bassmasters.com> registered by Respondent is identical to, or confusingly similar to, the trademark BASSMASTER and BASSMASTER-
formative marks, in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the domain name <bassmasters.com>; and
3. The domain name <bassmasters.com> has been registered, and is being used, in bad faith.
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.
Identical and/or Confusingly Similar
Complainant asserts rights in the BASSMASTER mark through several trademark registrations with the United States Patent and Trademark Office (“USPTO”), the earliest of which is Registration Number 921,984 issued on October 12, 1971. Copies of the Certificates of Registration, along with assignment information from the United States Patent and Trademark Office’s online database, for U.S. Trademark Registration Nos. 2,368,713, 1,411,744, and 921,984 are attached as Exhibit B.
The Panel finds that Complainant’s trademark registrations with the USPTO adequately establish Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for the purposes of Policy ¶ 4(a)(i).”).
Complainant contends that the <bassmasters.com> domain name is confusingly similar to its BASSMASTER mark as the disputed domain name contains Complainant’s mark in its entirety, and merely adds the letter “s” to the end of the mark, as well as a top-level domain, which is a necessary element of all domain names. The Panel agrees with Complainant’s assertions, and holds the <bassmasters.com> domain name to be confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
While Respondent contends that the <bassmasters.com> domain name is comprised of common, descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Rights and Legitimate Interests
Once Complainant makes 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 Policy ¶ 4(a)(ii). 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).
Under the requirements of Policy ¶ 4(c)(ii), Respondent must demonstrate that it is either commonly known by the <bassmasters.com> domain name in order to have rights or legitimate interests, or that it is a licensee of Complainant. Complainant contends that there is no evidence in the record to indicate that Respondent is, or has ever been, known by the disputed domain name, and that Respondent is not authorized to use Complainant’s BASSMASTER mark. The Panel finds the evidence in the record supports Complainant’s contentions, and the Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii, nor is it authorized to use same. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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).
The Panel finds, after viewing Complaint Exhibits G and H, that Respondent is using the <bassmasters.com> domain name to operate a website that displays hyperlinks and pop-up advertisements to various third-party web sites, some of which are in direct competition with Complainant. The Panel finds that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (holding that the respondent’s use of the <toyrus.com> domain name, a simple misspelling of the complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Registration and Use in Bad Faith
Complainant
contends that the <bassmasters.com>
domain name is being used to display hyperlinks and pop-up advertisments to
various third-parties, some of which are in direct competition with
Complainant. The Panel finds that such
use is presumptively for Respondent’s own commercial benefit through the
accrual of click-through fees. The Panel
finds that said direct competition with Complainant is capable of creating a
likelihood of confusion as to Complainant’s source and affiliation with the
disputed domain name and corresponding website. Thus, the Panel finds evidence of bad faith
registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum
July 18, 2006) (finding that the respondent engaged in bad faith registration
and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976
(Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
Complainant has proffered sufficient evidence to prove that some of the websites displayed at the <bassmasters.com> domain name are in direct competition with Complainant. The Panel therefore finds that such use of the disputed domain name is a disruption of Complainant’s business, and therefore qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bassmasters.com> domain name shall be TRANSFERRED from Respondent to Complainant.
Carol
M. Stoner, Esq., Panelist
Dated: November 5, 2007
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