National Arbitration Forum
DECISION
Head Technology GmbH v.
Claim Number: FA0803001172984
PARTIES
Complainant is Head Technology GmbH (“Complainant”), represented by David
M. Kelly, Esquire, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P., Washington, DC, USA.
Respondent is Texas International Property Associates - NA NA
(“Respondent”), represented by Gary Wayne Tucker, Esquire, of Law Office of Gary Wayne Tucker,
REGISTRAR AND DISPUTED DOMAIN NAME
The Domain Name at issue is <headsportswear.com>, registered with
Compana,
LLC.
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.
M. Kelly Tillery, Esquire, Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 31, 2008; the
National Arbitration Forum received a hard copy of the Complaint on April 1, 2008.
On April 2, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <headsportswear.com> Domain Name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 April 7, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 28, 2008 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@headsportswear.com by e-mail.
A timely Response was received and determined to be complete on April 28, 2008.
A timely Additional Submission was received from Complainant and
determined to be complete on May 2, 2008.
A Reply to same was received from Respondent on May 7, 2008.
On May 6, 2008, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed M. Kelly Tillery, Esquire as Panelist.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends
that:
1.
it traces its roots to 1947 when Howard Head
invented the metal ski and went on to found Head Ski Company;
2.
it has
grown into a leading global manufacturer and marketer of premium sports
equipment and sportswear, serving more than 30,000 accounts in 85
countries with 10 manufacturing operations in the U.S. and Europe, and its
largest markets are North America, Europe, and Japan;
3.
it, through its predecessors-in-interest, first
used its HEAD trade name and Trademark in the United States in 1948 in
connection with skis, rackets, and bags and has since expanded its business to
manufacture and sell, both directly and through licensees, a wide variety of sportswear,
sports equipment, bags, headwear, footwear, eyewear, and related products under
the HEAD mark in the United States and around the world;
4.
HEAD sportswear and clothing has been
sold throughout the
5.
it has, over the years, used “Head Sportswear” in various ways
including as corporate names and division or business unit names, and to
identify Head’s lines of sportswear products;
6.
it has, over
the years, extensively and widely advertised and promoted its products and
services under the HEAD mark, spending
hundreds of millions of dollars to
advertise and promote its products worldwide under the HEAD mark;
7.
it and its licensees have sold billions of
dollars worth of sportswear, sports equipment, bags, footwear, and
related products worldwide under its HEAD mark, its worldwide sales were in
excess of U.S. $162,000,000 in 2007 alone;
8.
as a result of extensive advertising, promotion,
and use of its HEAD mark for over fifty years in the
9.
it extensively
promotes its products under the HEAD mark on
the Internet since 2000, has used its website as a worldwide information
channel for its business;
10.
it owns
numerous Trademark Registrations worldwide for the HEAD mark, including
a.
Registration No. 675,190 for the HEAD mark
(stylized), first used December 1948, filed May 28, 1958, issued March 10,
1959, covering snow skis in International Class 28;
b.
Registration No. 871,815 for the mark HEAD and
Design, first used March 20, 1967, filed October 19, 1967, issued June 24,
1969, covering ski clothing in International Class 25;
c.
Registration No. 1,020,388 for the HEAD mark (in block letters), first used
December 31, 1948, filed June 22, 1974, issued September 16, 1975, covering sportswear,
tote bags, and sports equipment in International Classes 25, 18, and 28;
d.
Registration No. 1,695,827 for the HEAD mark (in
block letters), first used September 1970, filed October 4, 1990, issued March
3, 1992, covering sportswear, tensometers, bags, and sports equipment in
International Classes 25, 9, 18, and 28;
e.
Registration No. 1,677,425 for the HEAD mark (in
block letters), first used January 1989, filed October 4, 1990, issued March 3,
1992, covering water bottles and towels in International Classes 21 and 24;
f.
Registration No. 2,045,422 for the HEAD mark (in
block letters), filed June 20, 1995, issued March 18, 1997, covering sports
bags and other bags in International Class 18;
g.
Registration No. 1,762,980 for the HEAD mark (in
block letters), first used January 1991, filed June 29, 1992, issued April 6,
1993, covering golf clubs and golf bags in International Class 28.
11.
its Trademark rights in the HEAD mark, based on
its Trademark Registrations and on its Common-Law Rights, long predate
Respondent’s registration of the Domain Name;
12.
Respondent registered the Domain Name on December 27, 2004, long after Complainant began using
the HEAD mark; long after Complainant registered its HEAD
mark
in the U.S. and elsewhere; and long after Complainant’s
HEAD mark
became famous;
13.
Respondent uses the Domain Name for a
commercial, pay-per-click website featuring search categories, including a
category “Head Sportswear” that plainly refers to Complainant and its
sportswear products as well as categories referring to Complainant’s
competitors;
14.
the Domain Name <headsportswear.com> is
confusingly similar to Complainant’s famous and federally registered HEAD mark because it is comprised of the HEAD mark in its entirety and the
generic or descriptive term “sportswear;”
15.
the addition
of the generic or descriptive term “sportswear” to Complainant’s HEAD mark in the
Domain Name increases the likelihood of confusion because the term “sportswear”
identifies Head’s products and Head has offered and promoted sportswear for
many years;
16.
Respondent
has no rights or legitimate interest in the Domain Name;
17.
Respondent
has no intellectual property rights in Complainant’s HEAD mark;
18.
Respondent is not and has
not been commonly known by the Domain
Name;
19.
there is no plausible explanation for
Respondent’s registration of a Domain Name comprised of the term “sportswear”
in combination with Complainant’s federally registered HEAD mark that
identifies Complainant’s sportswear;
20.
Respondent
uses the Domain Name to intentionally attract, for commercial gain, Internet
users to its pay-per-click website by creating a likelihood of confusion with Complainant and its federally registered HEAD mark as to
the source, sponsorship, affiliation, and/or endorsement of Respondent’s
website;
21.
Respondent undoubtedly registered the Domain
Name with knowledge of Complainant’s rights in its HEAD mark because (1)
Complainant owns numerous Trademark registrations for its HEAD mark in the
B. Respondent
Respondent contends that:
1.
it
does not dispute that Complainant has used the term “HEAD” for some time, nor
does it dispute that Complainant holds certain Trademarks containing the word “head.”
2.
the
Domain Name consists of a descriptive phrase “sports wear” used by numerous
third parties;
3.
the
descriptive phrase “head sportswear” appears in news articles as well as
numerous others making sportswear including Diamond Head Sportswear, Volleyball Head Sportswear, Fox Racing Dead
Head Sportswear, and Duck Head Sportswear;
4. it has used the Domain Name to provide a web portal which
provides users with a search function as well as ads provided through the
Google Adsense program;
5. mere ownership of a common term domain should, in and of itself, establish the owner’s rights and legitimate interest;
6. Complainant has not proffered evidence that demonstrates
that Respondent has specifically intended to confuse consumers seeking out
Complainant;
7. Respondent did not
register the disputed Domain Name to sell to Complainant or any other party nor
has there been any such allegation by Complainant.
C. Additional Submissions
Complainant further contends that:
1. third-party
uses of HEAD-formative and SPORTSWEAR-formative marks are irrelevant as none
reproduced exactly in the Domain Name as is Head’s HEAD mark and none are
referenced on Respondent’s website, unlike Head’s HEAD mark that is referenced
numerous times on Respondent’s website and Respondent has offered no proof that
third party, let alone the “widespread use” claimed by Respondent, uses a HEAD
mark alone to identify sportswear products;
2. Respondent’s
claim that the composite phrase “head sportswear” is a “descriptive phrase” has
no merit for Respondent misrepresents third-party uses of DUCK HEAD SPORTS
WEAR, DIAMOND HEAD SPORTS WEAR, FOX RACING DEAD HEAD SPORTSWEAR by claiming
“head sportswear” is a descriptive phase in these uses. In other words, Respondent argues that such
marks are really DUCK for “head sportswear,” “DIAMOND” for “head sportswear,”
and FOX RACING DEAD for “head sportswear.”
The third-party marks in these uses are actually DUCK HEAD, DIAMOND
HEAD, and FOX RACING DEAD HEAD, and the accompanying descriptive term is
“sportswear,” not “head sportswear.”
3. Respondent
does not use the Domain Name descriptively, as Respondent’s pay-per-click
website refers to Head and its
sportswear products.
Respondent further contends that:
1. Complainant’s
Reply is untimely, merely restates arguments made previously and misrepresents
certain things as “admitted” by Respondent which were not.
FINDINGS
1)
Complainant
has met its burden to prove by a preponderance of the relevant, credible,
admissible evidence that Respondent’s Domain Name is identical and/or
confusingly similar to a Trademark in which Complainant has rights.
2)
Complainant
has met its burden to prove by a preponderance of the relevant, credible,
admissible evidence that Respondent has no rights or legitimate interest in
respect of the Domain Name.
3)
Complainant
has met its burden to prove by a preponderance of the relevant, credible,
admissible evidence that Respondent’s Domain Name 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
Respondent does not dispute that Complainant owns a number of Trademarks in which it has rights including Federal Registrations for the Mark Head and Common Law rights in and to the mark Head Sportswear.
The Domain Name <headsportswear.com> is identical
to the Head Sportswear Common Law
Trademark in which Complainant has rights as well as confusingly similar to the
Head Trademark in which
Complainant has rights. The latter is so
because the second word in the Domain Name “sportswear” is a word describing one
of the many products to which Complainant affixes its Federally Registered Mark
Head. Thus, even if this Panel did not find that
Complainant had Common Law Trademark rights in and to the Mark Head Sportswear, it would still find
that Respondent’s Domain Name is confusingly similar to the “Head” Trademarks in which Complainant
has rights. See E.J.
McKernan, Co. v.
Rights or Legitimate Interests
Complainant has put forth a prima facie case to the effect that
Respondent has no rights or legitimate interests in respect to the Domain Name
to which Respondent merely responds that it is only using two generic,
descriptive words and it is entitled to do that since it first registered
these. If Respondent were, for
example, selling football helmets, lacrosse helmets, baseball batting helmets
and other sportswear used on a human head, that is, sportswear for the head,
this might be a different case. Respondent
makes no such claims, but rather is utilizing this Domain Name to direct
consumers searching for “Head Sportswear” to other sites which do in fact sell
sportswear of Complainant, but more importantly, to sites of other
sellers of sportswear which are direct competitors of Complainant. See Am. Automobile Assoc. Inc. v.
Respondent claims that it is merely using two generic, descriptive words and that it has rights or legitimate interests in respect to the Domain Name are simply not credible. There can be no doubt that Respondent has monetized this Domain Name in order to trade upon the substantial fame, goodwill and value in the Head Sportswear and HEAD Marks. Such use does not evidence rights or legitimate interests in respect to the Domain Name.
Registration and Use in Bad Faith
Respondent registered this Domain Name on December 27, 2004, 61 years after Complainant, or its predecessors-in-interest began using the Trademark Head and some 41 years after Complainant began using the mark Head on sportswear and the Common Law Mark Head Sportswear. This Domain Name registration was also made many years after Complainant secured its first United States Federal Registration for the Mark Head (March 10, 1959), long after Complainant secured its first Federal Registration for the Mark “Head and Design” applicable to ski clothing (June 24, 1969) and years after the Complainant secured a Federal Registrations for its Head Mark for sportswear (Nov. 16, 1975 and March 3, 1992).
Respondent does not deny that it was aware of Complainant and Complainant’s products, including sportswear, prior to registering the Domain Name. In fact, it would not be credible if Respondent did so. Thus, Respondent registered the Domain Name on December 27, 2004 with actual knowledge of the existence of Complainant, Complainant’s Marks and Complainant’s use of the Marks in connection with sportswear.
Whether Complainant had actual knowledge of the Federal Registrations is immaterial as they are and should be held to have constructive knowledge of same as these are of public record. Respondent acknowledges familiarity with Domain Names and Trademarks and it would strain credulity if Respondent were to argue otherwise given its experience in ICANN Domain Name Arbitration disputes. Complainant’s argument that evidence of Respondent’s bad faith is the fact that it has registered many other Domain Names and had been involved in many other ICANN Domain disputes is unavailing, except to the effect that same evidences substantial experience with Domain Names and Trademarks on the part of the Respondent.
Thus, in light of its actual and imputed knowledge of Complainant and its Marks and uses, this Panel finds the Respondent’s registration of the Domain Name on December 27, 2004 was made in bad faith.
Further, Respondent’s use of this Domain Name is clearly in bad faith as it uses the Marks of Complainant to lead consumers to similar products of other companies, competitors of Complainant. This is precisely the type of use which the UDRP is designed to prevent.
Respondent’s claims of widespread
third party use are, at best, disingenuous.
As Complainant correctly points out, not one of the four third party
uses mentioned (Diamond Head Sportswear; Volleyball Head Sportswear; Fox Racing
Dead Head Sportswear and Duck Head Sportswear) are anything other than Duck
Head,
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 <headsportswear.com> Domain Name be TRANSFERRED
from Respondent to Complainant.
M. Kelly Tillery,
Esquire, Panelist
Dated: June 2, 2008