Shaun White v. Xedoc Holding SA c/o Domain Manager
Claim Number: FA0709001076593
Complainant is Shaun
White (“Complainant”), represented by Mark
Ervin, of IMG Worldwide, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shaunwhite.com>, registered with Webair Internet Development, 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On September 15, 2007, Webair Internet Development, Inc. confirmed by e-mail to the National Arbitration Forum that the <shaunwhite.com> domain name is registered with Webair Internet Development, Inc. and that Respondent is the current registrant of the name. Webair Internet Development, Inc. has verified that Respondent is bound by the Webair Internet Development, 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 September 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 11, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shaunwhite.com> domain name is identical to Complainant’s SHAUN WHITE mark.
2. Respondent does not have any rights or legitimate interests in the <shaunwhite.com> domain name.
3. Respondent registered and used the <shaunwhite.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shaun White, is a successful professional
action sports athlete who is well-known worldwide. Known as “The Flying Tomato,” Complainant won
the Olympic Gold Medal in the men’s snowboard half pipe event at the 2006
Winter Olympics in
Respondent registered the <shaunwhite.com> domain name on June 16, 2007. The disputed domain name resolves to a search engine website featuring links to third-party, commercial websites.
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 attempts to establish common law rights in the SHAUN WHITE mark through the illustration of secondary meaning of the mark through continuous and extensive use of the mark in commerce. Complainant presents evidence indicating that his name has achieved secondary meaning. Complainant, besides winning an Olympic Gold Medal in 2006, also has been prominently featured in well-known publications such as “Rolling Stone” and “Sports Illustrated.” The Panel finds that Complainant’s proffered evidence indicating that his name has achieved secondary meaning sufficiently establishes common law rights in the SHAUN WHITE mark pursuant to Policy ¶ 4(a)(i). See 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); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Respondent’s <shaunwhite.com> domain name contains Complainant’s SHAUN WHITE mark in its entirety, merely eliminating the space between the two words and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that, despite the deletion of a space between the two words of Complainant’s mark and a gTLD, Respondent’s <shaunwhite.com> domain name is identical to Complainant’s 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 Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In instances where Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to set forth concrete evidence indicating that it has rights or legitimate interests in accordance with Policy ¶ 4(a)(ii). See F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). The Panel finds that Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy.
The disputed domain name currently resolves to a search engine website that offers Internet users links to third-party, commercial websites. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
A review of Respondent’s WHOIS registration information
reveals that the registrant of the <shaunwhite.com> domain name is
“Xedoc Holding SA.” In light of this and
the lack of countervailing evidence, the Panel finds that Respondent is not commonly
known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See America West
Airlines, Inc. v. Paik, FA 206396 (Nat.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As indicated above, Respondent’s <shaunwhite.com> domain name resolves to a website offering links to various, third-party websites presumably for Respondent’s commercial gain. Such use is likely to cause confusion among unsuspecting Internet users as to the source and affiliation of the resulting material especially in light of Complainant’s former registration of the <shaunwhite.com> domain name. Consequently, the Panel finds that Respondent’s registration of the <shaunwhite.com> domain name was made in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Finally, Complainant offers evidence indicating that it previously held the <shaunwhite.com> domain name and when Complainant inadvertently allowed the registration to lapse, Respondent registered the disputed domain name. The Panel finds that Respondent’s registration of the disputed domain name after Complainant’s registration unintentionally lapsed constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”).
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 <shaunwhite.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: November 5, 2007
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