national
arbitration forum
DECISION
SGF License, LLC v. Alexander Shadikhan
Claim Number: FA0909001283159
PARTIES
Complainant is SGF License, LLC (“Complainant”), represented by Michael
J. McCue, of Lewis and Roca LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <steffigraf.info>, registered with Wild West Domains.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 8, 2009.
On September 8, 2009, Wild West Domains confirmed by e-mail to the National Arbitration Forum that the <steffigraf.info> domain name is registered with Wild West Domains and that Respondent is the current registrant of the name. Wild West Domains has verified that Respondent is bound by the Wild West Domains 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 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 30, 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@steffigraf.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2009, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
Stefanie Graf (“Graf”), known as Steffi Graf, is one of the greatest professional tennis players of all time.
Since commencing her professional tennis career in 1982, Graf has won twenty-two Grand Slam titles: seven at Wimbledon, six at the French Open, five at the U.S. Open, and four at the Australian Open, and has been ranked among the Top Ten professional women players by the Women’s Tennis Association (“WTA”).
Despite Graf’s retirement from the game of tennis in 1999, she remains in the public spotlight through her philanthropic efforts and business dealings.
Through a series of contracts and agreements between
Complainant, SGF License, LLC, and Graf,
Complainant owns the exclusive right to use and sublicense the GRAF mark.
The GRAF mark has been
sublicensed by Complainant to companies such as Adidas and other apparel
companies to market and sell sports products under the GRAF mark.
Owing to extensive marketing
and advertising of the GRAF mark in multiple channels of trade, the mark has
come to distinguish goods an services associated with Steffi Graf and the mark
has acquired distinctiveness and secondary meaning in the marketplace, so that
Complainant has for many years enjoyed common law trademark rights in the mark.
Complainant has not
authorized Respondent to use the GRAF mark, and Respondent is not commonly
known by the disputed domain name.
Respondent registered the <steffigraf.info> domain name on March 31, 2009.
The disputed domain name resolves to a website displaying sponsored links that further resolve to third-party commercial websites offering tennis equipment.
Some of the links displayed at the disputed domain name’s resolving website include “Tennis Balls 20%-50% Off,” “Discount Tennis Gear,” “Tennis Ball Machines,” and “Tennis Club Membership.”
Respondent’s <steffigraf.info> domain name is confusingly similar to Complainant’s GRAF mark.
Respondent does not have any rights or legitimate interests in the <steffigraf.info> domain name.
Respondent registered and used the <steffigraf.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to 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.
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 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.
Identical and/or Confusingly Similar
While trademark registration with a pertinent governmental authority is one way to demonstrate rights in a mark, such registration is not the sole means to establish rights in a mark under Policy ¶ 4(a)(i). Previous Panels have determined that registration of a mark is not required so long as a complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark, and this Panel agrees. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names”, and applying the Policy to “unregistered trademarks and service marks”).
Complainant contends that it has established common law rights in the GRAF mark in connection with the successful professional women’s tennis player, Stefanie “Steffi” Graf. Complainant’s submissions sufficiently demonstrate that its GRAF mark has acquired substantial secondary meaning for the purposes of Policy ¶ 4(a)(i). Thus, we conclude that Complainant has established common law rights in the GRAF mark through continuous and extensive commercial use starting in 1985 under Policy ¶ 4(a)(i). See Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (holding that a complainant had accrued common law rights in the KEVIN GARNETT mark); see also CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12, 2001) (finding that a complainant had established enforceable rights in the common-law VINCE LOMBARDI name and mark).
Respondent’s
<steffigraf.info> domain
name incorporates Complainant’s GRAF mark in its entirety with the affixation
of the top-level domain “.info” and the addition of the word “steffi,” which
has an obvious connection to Stefanie “Steffi” Graf. The word “steffi” is plainly descriptive of
Complainant’s GRAF mark and thus it fails to distinguish the disputed domain
name from Complainant’s GRAF mark.
Additionally, the affixation of the top-level domain “.info” is
irrelevant for the purposes of a Policy ¶ 4(a)(i)
analysis. See Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s
domain name combines a complainant’s mark with a generic term that has an
obvious relationship to that complainant’s business); see also Microsoft Corp. v. Zournas, FA 1093928
(Nat. Arb. Forum Dec. 10, 2007):
[t]he addition of
a gTLD is a necessary addition in the creation of any domain name and therefore
an indistinguishing characteristic under Policy ¶ 4(a)(i).
Therefore, the Panel concludes that Respondent’s <steffigraf.info> domain name is confusingly similar to Complainant’s GRAF mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent lacks rights to and legitimate interests in the <steffigraf.info> domain name. Previous panels have found that when a complainant makes out a prima facie case in support of its allegations, the burden shifts to a respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights or legitimate interests in a domain name).
Complainant has made out a prima facie case, and, owing to Respondent’s failure to respond to the Complaint, we may presume that Respondent does not have rights to or legitimate interests in the <steffigraf.info> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to the allegations of a complaint made under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). However, we will examine the record before us to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name under the criteria set out in Policy ¶ 4(c).
We begin by noting that there is no dispute as to
Complainant’s allegation to the effect that Respondent’s <steffigraf.info> domain name
resolves to a website displaying sponsored click-through links that further resolve
to third-party commercial websites offering tennis equipment and supplies, and
that some of the sponsored links displayed at the disputed domain name’s
resolving website include “Tennis Balls 20%-50% Off,” “Discount Tennis Gear,”
“Tennis Ball Machines,” and “Tennis Club Membership.” We may presume from the circumstances
presented that Respondent generates revenue through the use of these competing
click-through links. Thus, we conclude
that Respondent is not using the <steffigraf.info>
domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use under Policy ¶¶ 4(c)(i) or (iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a domain
name within the parameters of Policy ¶ 4(c)(i) or (iii) because that respondent
used the domain to take advantage of a complainant's mark by diverting Internet
users to a competing commercial site); see also TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a
respondent’s diversionary use of a complainant’s marks to send Internet users
to a website which displayed a series of links, some of which related to that
complainant’s competitors, was not a bona fide offering of goods or
services).
We also observe that the pertinent WHOIS information
identifies the registrant of the <steffigraf.info>
domain name as “Alexander Shadikhan.” Moreover, Complainant contends, and
Respondent does not deny, that it has not authorized Respondent to use the GRAF
mark and that Respondent is not commonly known by the disputed domain
name. There is no information in the
record to suggest otherwise. Therefore we conclude that Respondent is not
commonly known by the <steffigraf.info> domain name under
Policy ¶ 4(c)(ii). See Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not
commonly known by the <lilpunk.com> domain name where there was no
evidence in the record, including the pertinent WHOIS information, showing that
that respondent was commonly known by that domain name, and where a complainant
asserted that it did not authorize or license that respondent’s use of its mark
in a domain name); 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 Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent’s use of Complainant’s GRAF mark to operate a website offering links to sports-related products that compete with Complainant’s own sponsorship of sports-related products is disruptive of Complainant’s business and thus constitutes bad faith registration and use of the contested domain pursuant to 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 domain name confusingly similar to a competing mark to attract Internet users to a website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
In addition, it appears from the facts spelled out in the Complaint that Respondent is attempting to attract Internet users to its disputed domain name by utilizing a domain name that is confusingly similar to Complainant’s GRAF mark. We presume that Respondent receives click-through fees each time an Internet user clicks on the sponsored links featured at the <steffigraf.info> domain name’s resolving website. It is likely in these circumstances that Internet users would be confused as to Complainant’s possible sponsorship of or affiliation with the disputed domain name. Thus, we conclude that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). 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 Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a disputed domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website, likely profiting from this activity.
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
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 <steffigraf.info> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 11, 2009
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