Walter Tripovich v. Michael Klein
Claim Number: FA0806001211537
Complainant is Walter Tripovich (“Complainant”), represented by Victoria J. Brown, of Primmer Piper Eggleston & Cramer PC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leftiesonly.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 26, 2008.
On June 23, 2008, Network Solutions, Inc confirmed by e-mail to the National Arbitration Forum that the <leftiesonly.com> domain name is registered with Network Solutions, Inc and that the Respondent is the current registrant of the name. Network Solutions, Inc has verified that Respondent is bound by the Network Solutions, 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 July 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 22, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on July 22, 2008.
Complainant filed an Additional Submission on July 28, 2008, and Respondent filed an Additional Submission on July 30, 2008.
On August 1, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <leftiesonly.com> domain name is confusingly similar to Complainant’s LEFTIES ONLY mark.
Respondent does not have any rights or legitimate interests in the <leftiesonly.com> domain name.
Respondent registered and used the <leftiesonly.com> domain name in bad faith.
B. Respondent makes the following assertions:
Complainant didn’t trademark LEFTIES ONLY until 2001, after Respondent registered the <leftiesonly.com> domain name.
Respondent purchased the <leftiesonly.com> domain name in anticipation of
possible future business endeavors.
Respondent was unaware that Network Solutions populated the website at
<leftiesonly.com> with links competing with Complainant.
C. Additional Submissions
Complainant states that it also held a trademark registration with the
USPTO for LEFTIES ONLY – A GOLF SPECIALTY SHOP from 1991-1997. He further states that, in 1995, he
registered LEFTIES ONLY as a tradename with the State of
Respondent states that the <leftiesonly.com> domain name is not identical to Complainant’s trademarked business name, and that it doesn’t harm Complainant’s business.
Complainant holds a U.S. Trademark Registration for LEFTIES ONLY issued in 2001, showing first use in 1985. Complainant previously held a U.S. Trademark Registration for LEFTIES ONLY – A GOLF SPECIALTY SHOP, registered in 1991 and in effect until 1997, also showing first use dating back to 1985. Complainant also operates its business under the <leftiesonlygolf.com> domain name. Respondent registered the <leftiesonly.com> domain name on December 9, 1998.
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.
Complainant has continuously used
its LEFTIES ONLY mark since 1985 for retail sales of left-handed golf equipment
Respondent’s <leftiesonly.com> domain name is confusingly similar to Complainant’s LEFTIES ONLY mark, as it merely adds the generic top-level domain “.com,” which is irrelevant for the purposes of evaluating a disputed domain name. Therefore, the Panel finds Respondent’s <leftiesonly.com> domain name is confusingly similar to Complainant’s LEFTIES ONLY mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent is not and was not commonly known by the <leftiesonly.com> domain name. Respondent did not dispute this. The WHOIS registrant of record, “Michael Klein,” bears no similarity or resemblance to the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant alleges that until June 13, 2008, the <leftiesonly.com> domain name resolved to a website that
displayed third-party links and advertisements for Complainant’s direct
competitors. Upon Respondent’s receipt
of Complainant’s cease-and-desist letter, Respondent removed the website’s
content and replaced it with a blank “under construction” web page. The hosting of competitive third-party
advertisements through the disputed domain name constitutes 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 Constellation
Respondent and/or Respondent’s registrar populated the domain with links and advertisements for left-handed golf equipment businesses that compete with Complainant. Complainant argues that regardless of the entity that placed the links, it is ultimately Respondent who bears the responsibility for the website’s content. The Panel agrees and finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”); see also Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”).
Respondent also offered to sell the disputed domain name to Complainant for $10,000.00, a price in excess of its registration costs, a further indication that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contacted Respondent in 2003 after several of Complainant’s customers indicated confusion in reaching Complainant’s website. Respondent demonstrated a willingness to sell the disputed domain name for $10,000.00. By itself, this is an indication of bad faith. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
Respondent has also engaged in Policy ¶ 4(b)(iv) bad faith registration and use by intentionally attracting Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion as to Complainant’s affiliation and endorsement of the disputed domain name and corresponding website. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Regardless of whether Respondent or
Respondent’s registrar placed advertisement links on the website resolving from
the disputed domain name, it is ultimately Respondent who carries
responsibility and, particularly after passively holding the domain name for
more than 10 years, Respondent is charged with bad faith registration and use
of the <leftiesonly.com> domain name under Policy ¶ 4(a)(iii). See St. Farm Mutual Auto. Insr.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <leftiesonly.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 14, 2008
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