Elias Sports Bureau, Inc. v. The Internet Guy
Claim Number: FA0208000123872
Complainant is Elias Sports Bureau, Inc., New York, NY (“Complainant”) represented by Mark Nesoff, of Rand Rosenzweig Smith Radley Gordon & Burstein LLP. Respondent is The Internet Guy, Santa Monica, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eliassportsbureau.com>, registered with Tucows, Inc.
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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 20, 2002; the Forum received a hard copy of the Complaint on August 26, 2002.
On August 27, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <eliassportsbureau.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 30, 2002 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, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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.
The <eliassportsbureau.com> domain name is identical to Complainant's ELIAS SPORTS BUREAU mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
Complainant holds service mark Registration Number 1,950,738 with the United States Patent and Trademark Office in relation to business services, namely compiling and providing statistics for sports activities such as baseball, basketball, football etc. to business entities.
Respondent registered the disputed domain name on December 21, 1999. Respondent is using <eliassportsbureau.com> in order to divert Internet users to <internetguy.com/domainlist.html>. On this website Respondent is offering numerous domain names for sale, including the disputed domain name. This site also contains links to pornographic 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 the 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.
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 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.
Identical and/or Confusingly Similar
Complainant has established that it has rights in the ELIAS SPORTS BUREAU mark through its registration with the United States Patent and Trademark Office.
Respondent’s <eliassportsbureau.com> domain name is identical to Complainant’s mark because it incorporates the entirety of Complainant’s mark and merely removes the spaces between the words and adds the generic top-level domain “.com.” The omission of spaces and the addition of a generic top-level domain are both irrelevant factors because spaces are impossible in a domain name and top-level domains are required. See Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response. Therefore, it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See 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”).
Respondent is using the disputed domain name in order to divert Internet users to <internetguy.com/domainlist.html>, a website featuring numerous domain names for sale and links to pornographic websites. It can be inferred from this behavior that Respondent does not plan to use the disputed domain name for any other purpose than to offer the domain name registration for sale. If Respondent’s only use of a domain name is to offer its registration for sale, Respondent is not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
There is no evidence on record, and Respondent has not come forward with a Response to provide proof that it is commonly known as ELIAS SPORTS BUREAU or <eliassportsbureau.com>. Therefore, Respondent has failed to establish that it has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has linked the <eliassportsbureau.com> domain name to a website that sells numerous domain names. It can be inferred from this behavior that Respondent registered the disputed domain name with the intent of selling, registering or transferring its rights. The registration of a domain name for this primary purpose is evidence of bad faith registration pursuant to Policy ¶ 4(b)(i). See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (finding that the name was registered in bad faith because of the short time frame between Respondent’s registration and the unsolicited offer of sale to Complainant); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name).
Furthermore, it can be inferred that Respondent is making a profit by diverting unsuspecting Internet users looking for Complainant to the <internetguy.com.domainlist.html> website. The website not only offers domains for sale, but also provides links to various pornographic sites. It is reasonable to infer that Respondent receives a commission from the business it attracts to this website and its links. Therefore, Respondent is using a website identical to Complainant’s mark to create a likelihood of confusion for Respondent’s commercial gain. This type of behavior is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <eliassportsbureau.com> be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 1, 2002
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