national
arbitration forum
DECISION
World Triathlon Corporation v. Tierra Nueva
Claim Number: FA0904001256881
PARTIES
Complainant is World
Triathlon Corporation (“Complainant”), represented by Zachary D. Messa, of Johnson, Pope, Bokor, Ruppel & Burns, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ironmanpuertorico.com>, registered with Godaddy.com, Inc.
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2009.
On April 9, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ironmanpuertorico.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 April 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 6, 2009 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@ironmanpuertorico.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <ironmanpuertorico.com> domain name is confusingly similar to Complainant’s IRONMAN mark.
2. Respondent does not have any rights or legitimate interests in the <ironmanpuertorico.com> domain name.
3. Respondent registered and used the <ironmanpuertorico.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, World Triathlon Corporation, organizes and
promotes triathlon competitions around the world under its IRONMAN mark, and
has done so since 1978. Complainant’s
signature event occurs annually in
Respondent registered the <ironmanpuertorico.com> domain name on June 22, 2006. The disputed domain name resolves to a website that features unrelated hyperlinks and a search engine.
DISCUSSION
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.
Identical and/or Confusingly Similar
The Panel finds that Complainant has
established sufficient rights in the IRONMAN mark through its various
registrations of the mark with the USPTO pursuant to Policy ¶ 4(a)(i).
Respondent’s <ironmanpuertorico.com>
domain name includes Complainant’s entire IRONMAN mark, and adds the geographic
location “puerto rico” and the generic top-level domain “.com.” As Complainant’s mark easily remains the most
dominant element of the disputed domain name, the Panel finds that none of the
additions create any meaningful distinctions under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Rights or Legitimate Interests
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Because Complainant has set forth a prima facie case supporting its allegations, Respondent carries the burden to show that it does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Based on the evidence within the record, there is no indication that Respondent is commonly known by the disputed domain name. The WHOIS domain name registration information only lists the registrant of record as “Tierra Nueva.” As such, the Panel finds that Respondent lacks rights and 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 the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The disputed domain name resolves to website that displays
various unrelated third-party click-through links and a search engine. The Panel infers a monetary benefit from this
redirection due to the presumed receipt of referral fees by Respondent. Therefore, the Panel finds that Respondent
has not created a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit
Group, LLC v. LSO, Ltd., FA
758981 (Nat. Arb. Forum
Sept. 14, 2006) (finding that the respondent’s use of the complainant’s
LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website
for commercial gain does not constitute either 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 also Fox News Network, LLC v. Reid,
D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the
disputed domain name to generate revenue via advertisement and affiliate fees
is not a bona fide offering of good or services).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent’s disputed domain name resolves to a commercial
website that promotes unrelated third parties for presumed referral fees. The Panel finds that the use of a confusingly
similar disputed domain name in such a commercial manner was designed to trade
off the goodwill of Complainant’s mark, which constitutes bad faith
registration and use under 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); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th
Cir. 2002) ("While an intent to confuse consumers is not required for a
finding of trademark infringement, intent to deceive is strong evidence of a
likelihood of confusion.").
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
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 <ironmanpuertorico.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 22, 2009
National
Arbitration Forum