SGF License, LLC v. greate echo ltd. c/o mi dominio
Claim Number: FA0909001283181
Complainant is SGF,
LLC (“Complainant”), represented by Michael
J. McCue, of Lewis and Roca LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <steffigraf.net>, registered with Dynadot, 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. Crary as Panelist.
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 9, 2009, Dynadot, Llc confirmed by e-mail to the National Arbitration Forum that the <steffigraf.net> domain name is registered with Dynadot, Llc and that Respondent is the current registrant of the name. Dynadot, Llc has verified that Respondent is bound by the Dynadot, 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 September 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 7, 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.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <steffigraf.net> domain name is confusingly similar to Complainant’s GRAF mark.
2. Respondent does not have any rights or legitimate interests in the <steffigraf.net> domain name.
3. Respondent registered and used the <steffigraf.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SGF License, LLC, is a limited liability company that owns the exclusive right to use the GRAF mark, which is derived from the professional tennis player Stefanie Graf, known as “Steffi Graf.” Complainant has used and licensed the GRAF mark in many endorsement and licensing agreements and has undertaken a considerable amount of marketing and advertising of the GRAF mark.
Respondent, greate echo ltd. c/o mi dominio, registered the <steffigraf.net> domain name on March 9, 2009. The disputed domain name resolves to a website that displays hyperlinks both to unrelated third-party websites and to Complainant’s competitors in the endorsement business.
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 does not need to hold a registration of the GRAF mark in order to establish rights in the mark provided that it can establish common law rights in the mark through a sufficient showing of secondary meaning. 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 Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant asserts that the GRAF mark has acquired secondary meaning due to the fame of its namesake, Steffi Graf, the numerous licensing agreements for the GRAF mark, and the considerable marketing and advertising of the GRAF mark. The Panel agrees and finds that Complainant has established common law rights in the GRAF mark under Policy ¶ 4(a)(i) through this sufficient showing of secondary meaning. See James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark has become distinct through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s television show, clothing line, and tattoo shop for over seventeen years.”); see also Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (holding that the complainant had accrued common law rights in the KEVIN GARNETT mark).
Respondent’s <steffigraf.net> domain name contains Complainant’s entire GRAF mark, adds the abbreviated first name “Steffi,” and adds the generic top-level domain “.net.” The Panel finds none of these additions to Complainant’s mark sufficiently distinguishes the disputed domain name from Complainant’s mark. Therefore, the Panel finds that the <steffigraf.net> domain name is confusingly similar to Complainant’s GRAF mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has made this showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii) and the burden now shifts to Respondent, from which no response was received. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).”).
Respondent is listed in the WHOIS information as “greate
echo ltd. c/o mi dominio,” which does not indicate that Respondent is commonly
known by the <steffigraf.net> domain name. Respondent has not
offered any evidence to indicate otherwise.
The Panel finds that Respondent is not commonly known by the disputed
domain name under Policy ¶ 4(c)(ii). See Braun Corp. v.
Loney, FA 699652 (Nat.
Arb. Forum July 7, 2006) (concluding that the respondent
was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the
complainant had not authorized the respondent to register a domain name
containing its registered mark); 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).
Respondent’s <steffigraf.net>
domain name resolves to a parked website featuring commercial links and
advertisements. Some of the commercial
links and advertisements relate to Complainant’s competitors in Complainant’s
endorsement business. The Panel infers
Respondent receives click-through fees from the hyperlinks and
advertisements. The Panel finds
Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
disputed domain name under Policy ¶ 4(c)(iii).
See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent’s use of the <steffigraf.net> domain name disrupts Complainant’s endorsement business. Respondent’s domain name resolves to a parked website featuring hyperlinks and advertisements, some of which compete with Complainant. The Panel finds Respondent’s use of a confusingly similar disputed domain disrupts Complainant’s business, which 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 Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
The Panel infers Respondent receives click-through fees from
the hyperlinks and advertisements featured on the resolving website from the
disputed domain name. Internet users,
interested in Complainant and Complainant’s services, may become confused as to
Complainant’s affiliation with the disputed domain name and resolving
website. The Panel finds Respondent’s
use of the confusingly similar disputed domain to profit from the goodwill
Complainant has developed in the mark constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
The Panel finds 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 <steffigraf.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: October 28, 2009
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