national arbitration forum

 

DECISION

 

Bob Perani Sport Shops, Inc. v. Telecom Tech Corp S.A

Claim Number: FA0910001287902

 

PARTIES

Complainant is Bob Perani Sport Shops, Inc. (“Complainant”), represented by Mark D. Schneider, of Gifford, Krass, Sprinkle, Anderson & Citkowski, P.C., Michigan, USA.  Respondent is Telecom Tech Corp S.A (“Respondent”), Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <peranishockeyworld.com>, registered with Moniker.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 7, 2009.

 

On October 11, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <peranishockeyworld.com> domain name is registered with Moniker and that Respondent is the current registrant of the name.  Moniker has verified that Respondent is bound by the Moniker 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 October 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 2, 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@peranishockeyworld.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 5, 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.

 

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 <peranishockeyworld.com> domain name is confusingly similar to Complainant’s PERANI’S HOCKEY WORLD mark.

 

2.      Respondent does not have any rights or legitimate interests in the <peranishockeyworld.com> domain name.

 

3.      Respondent registered and used the <peranishockeyworld.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Bob Perani Sport Shops, Inc., originated in 1976 and now operates as a hockey retailer in the United States and Canada.  In 1993, Complainant became known as PERANI’S HOCKEY WORLD.  Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its PERANI’S HOCKEY WORLD mark (Reg. No. 2,695,155 issued March 11, 2003).

 

Respondent, Telecom Tech Corp S.A, registered the <peranishockeyworld.com> domain name on December 10, 2003.  The disputed domain name resolves to a website featuring a search site for hockey clothing and equipment.  Each hyperlink regarding the clothing and equipment resolves to a webpage containing a hyperlink directory that includes a link to Complainant’s website and links to Complainant’s competitors in the hockey clothing and equipment industry.  The resolving website also offers the disputed domain name for sale.

 

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

 

Previous panels have found that a trademark registration is sufficient for a complainant to establish rights in a 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).  Complainant has registered the PERANI’S HOCKEY WORLD mark with the USPTO (Reg. No. 2,695,155 issued March 11, 2003).  Therefore, the Panel finds Complainant has established rights in the PERANI’S HOCKEY WORLD mark pursuant to Policy ¶ 4(a)(i).

 

Complainant asserts that Respondent’s <peranishockeyworld.com> domain name is confusingly similar to Complainant’s PERANI’S HOCKEY WORLD mark.  The disputed domain name removes the spaces between the terms in the mark, removes the apostrophe from the “Perani’s” portion of the mark, and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds the removal of spaces and an apostrophe, coupled with the addition of a gTLD, fail to adequately distinguish the disputed domain name from Complainant’s mark.  See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  The Panel finds Respondent’s <peranishockeyworld.com> domain name is confusingly similar to Complainant’s PERANI’S HOCKEY WORLD mark under Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <peranishockeyworld.com> domain name.  Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <peranishockeyworld.com> domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).

 

The WHOIS information, provided by Complainant, lists Respondent as “Telecom Tech Corp S.A.”  Respondent fails to offer evidence contradicting this information and showing Respondent is commonly known by the <peranishockeyworld.com> domain name.  There is no other evidence on the record suggesting Respondent is commonly known by the disputed domain name.  Complainant further asserts that Respondent is not authorized to use the PERANI’S HOCKEY WORLD mark.  Therefore, the Panel finds that Respondent is not commonly known by the <peranishockeyworld.com> domain name pursuant to Policy ¶ 4(c)(ii) and therefore has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent’s <peranishockeyworld.com> domain name resolves to a website featuring hyperlinks to Complainant’s competitors in the hockey clothing and equipment business.  The Panel infers that Respondent profits through click-through fees from the links to Complainant’s competitors.  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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute 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 also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

Respondent also offers to sell the disputed domain name on the resolving website.  Respondent requests offers for the domain name, with a minimum offer requirement of 600 U.S. dollars.  The Panel finds Respondent’s offer to sell the disputed domain name for an amount in excess of Respondent’s out-of-pocket registration costs 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The <peranishockeyworld.com> domain name is offered for sale on the resolving website.  Respondent requests offers to purchase the disputed domain name, with a minimum offer requirement of 600 U.S. dollars.  The Panel finds Respondent’s registration of the disputed domain name for the purpose of selling the domain name for an amount in excess of Respondent’s out-of-pocket registration costs constitutes bad faith registration and use under Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).

 

Respondent uses the <peranishockeyworld.com> domain name to resolve to a website featuring hyperlinks to Complainant and Complainant’s competitors in the hockey equipment and clothing field.  Internet users intending to buy Complainant’s hockey equipment and clothing may purchase products from Complainant’s competitors instead because of Respondent’s use of the confusingly similar disputed domain name.  The Panel finds Respondent’s use of the disputed domain name disrupts Complainant’s hockey clothing and equipment business, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).

 

The Panel infers that Respondent receives click-through fees from the use of the aforementioned links.  Respondent is attempting to profit from creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and the resolving website.  Therefore, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also 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).

 

The Panel finds 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 <peranishockeyworld.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  November 19, 2009

 

 

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