Bass Pro Intellectual Property, LLC v. Gunther Veidenberg
Claim Number: FA0808001219606
Complainant is Bass Pro Intellectual Property, LLC (“Complainant”), represented by Laura
C. Gustafson, of Pillsbury Winthrop Shaw Pittman, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bassspro.com>, registered with Burnsidedomains.com LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 11, 2008.
On August 13, 2008, Burnsidedomains.Com LLC confirmed by e-mail to the National Arbitration Forum that the <bassspro.com> domain name is registered with Burnsidedomains.Com LLC and that Respondent is the current registrant of the name. Burnsidedomains.Com LLC has verified that Respondent is bound by the Burnsidedomains.Com 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").
14, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 3, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a well-known sports equipment and recreation
retailer with stores throughout the
Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BASS PRO mark (e.g.: Reg. No. 2,192,947, issued October 6, 1998).
Respondent registered the <bassspro.com> domain name on December 21, 2007.
Respondent’s domain name resolves to a website offering links to third-party websites, some of which are in competition with the business of Complainant.
Respondent’s <bassspro.com> domain name is confusingly similar to Complainant’s BASS PRO mark.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights or legitimate interests in the <bassspro.com> domain name.
Respondent registered and used the <bassspro.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Registration with the USPTO establishes Complainant’s rights in the BASS PRO trademark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”
Complainant asserts that Respondent’s <bassspro.com> domain name is confusingly similar to the BASS PRO mark pursuant to Policy ¶ 4(a)(i). Respondent’s domain name contains a misspelled version of Complainant’s mark and merely adds the generic top-level domain (“gTLD”) “.com.” This misspelled version of complainant’s mark is inherently confusing because the core elements of the disputed domain name and the mark are identical. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the mark where the mark is highly distinctive); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change a respondent’s infringement on a core trademark held by a complainant). Likewise, the addition of a gTLD and the absence of spacing are irrelevant in distinguishing a disputed domain name from a registered mark. 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 a domain name for purposes of determining whether it is identical or confusingly similar to a competing mark); 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”).
Therefore, pursuant to Policy ¶ 4(a)(i), Respondent’s <bassspro.com> domain name is confusingly similar to Complainant’s BASS PRO trademark.
Complainant contends that Respondent lacks rights to and legitimate interests in the <bassspro.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
On the record before us, we conclude that Complainant has established a prima facie case under the Policy. In these circumstances, Respondent’s failure to respond to the Complaint permits us to presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); further see Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.
We will nonetheless examine the evidence of record against the applicable Policy ¶ 4(c) elements before making a determination with regard to Respondent’s rights and legitimate interests in the contested domain.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). We also note that Respondent’s WHOIS information identifies Respondent as, “Gunther Veidenberg,” which fact supports Complainant’s assertion. Therefore, we conclude that Respondent lacks rights and legitimate interests in the disputed domain name under the provisions of Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”) See also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, that assertion must be rejected).
We next observe that Complainant asserts, without contradiction from Respondent, that Respondent uses the disputed domain name to attract Internet users to an associated website containing links to third-party sites, some of which are in competition with the business of Complainant. In light of this, we may presume that click-through fees are received by Respondent for each Internet user’s visit to the related websites. Such a use of a confusingly similar domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain pursuant to Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that a respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine in competition with the business of a complainant, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003): “Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the disputed domain name to offer Internet users links to third-party websites, some of which are in competition with the business of Complainant. We have already presumed, as we are entitled to do, that Respondent receives click-through fees for each such misdirected Internet user. The use of a confusingly similar domain name for the purpose of benefiting commercially as alleged is evidence of bad faith registration and use of the contested domain pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where a domain name resolved to a website that offered products similar to those sold under a complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because a respondent and a complainant were in the same line of business and that respondent used a domain name confusingly similar to that complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
In addition, it appears that Respondent registered the <bassspro.com> domain name with at least constructive knowledge of Complainant’s rights in the BASS PRO trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <bassspro.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 23, 2008
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