Hasbro, Inc. v. Shai Neubauer
Claim Number: FA0907001274648
Complainant is Hasbro, Inc. (“Complainant”), represented by Stephen
J. Jeffries, of Holland & Knight LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <stretcharmstrong.com> and <stretcharmstrong.org>, registered with Moniker Online Services, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 21, 2009.
On July 20, 2009, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <stretcharmstrong.com> and <stretcharmstrong.org> domain names are registered with Moniker Online Services, LLC and that Respondent is the current registrant of the names. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, 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 July 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 10, 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@stretcharmstrong.com and postmaster@stretcharmstrong.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <stretcharmstrong.com> and <stretcharmstrong.org> domain names are identical to Complainant’s STRETCH ARMSTRONG mark.
2. Respondent does not have any rights or legitimate interests in the <stretcharmstrong.com> and <stretcharmstrong.org> domain names.
3. Respondent registered and used the <stretcharmstrong.com> and <stretcharmstrong.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hasbro, Inc., is
one of largest toy makers in the world.
Complainant popularized its toy action figures bearing the STRETCH
ARMSTRONG mark in the 1970s. Complainant
holds several registrations of the STRETCH ARMSTRONG mark with the United
States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,797,173 issued
October 5, 1993).
Respondent registered the <stretcharmstrong.com> domain name on November 18, 1999 and registered the <stretcharmstrong.org> domain name January 7, 2009. Both of the disputed domain names resolve to similar websites that display hyperlinks to third-party websites, some which directly compete with Complainant.
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.
The Panel finds that Complainant’s submission of several
registrations of the STRETCH ARMSTRONG mark held with the USPTO sufficiently
establishes its rights in the STRETCH ARMSTRONG mark under Policy ¶
4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As
the [complainant’s] mark is registered with the USPTO, [the] complainant has
met the requirements of Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co.
v. Bonds, FA 873143 (Nat.
Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Both of the <stretcharmstrong.com> and <stretcharmstrong.org>
domain names contain Complainant’s mark in its entirety, delete the space
within the mark, and merely add one of two generic top-level domains (“gTLDs”):
“.com” or “org.” The Panel finds that
neither the deletion of the space within the mark nor the addition of a gTLD
sufficiently distinguishes the disputed domain names from Complainant’s mark. Therefore, the Panel finds that the <stretcharmstrong.com> and <stretcharmstrong.org>
domain names are identical to Complainant’s STRETCH ARMSTRONG mark under Policy
¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names. After Complainant makes a sufficient showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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).”).
The WHOIS information for both of the <stretcharmstrong.com> and <stretcharmstrong.org> domain names lists “Shai Neubauer” as the registrant. This does not indicate that Respondent is commonly known by either of the disputed domain names. Moreover, Respondent has not presented any evidence to suggest otherwise. Therefore, the Panel finds that Respondent is not commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Both of the <stretcharmstrong.com> and <stretcharmstrong.org> domain names resolve to similar websites that display hyperlinks to third-party websites, some of which redirect Internet users to Complainant’s competitors’ websites. Complainant presumes, as does this Panel, that Respondent receives click-through fees for such hyperlinks. Accordingly, the Panel finds that Respondent’s use of the disputed domain names to presumably receive click-through fees does not represent a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the <stretcharmstrong.com> and <stretcharmstrong.org> domain names to redirect Internet users to Complainant’s competitors’ websites via hyperlinks constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Furthermore, Respondent’s use of the <stretcharmstrong.com> and <stretcharmstrong.org> domain names and the aforementioned hyperlinks to presumably collect click-through fees allows Respondent to commercially gain from the goodwill surrounding Complainant’s STRETCH ARMSTRONG mark. Thus, the Panel finds that Respondent’s actions constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also 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)).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <stretcharmstrong.com> and <stretcharmstrong.org> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 26, 2009
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