Claim Number: FA0910001290208
Complainant is Fila Luxembourg S.a.r.l. (“Complainant”), represented by David
S. Modzeleski, of Arent Fox LLP, D.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <filasport.com>, registered with Domreg Ltd.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On November 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 23, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <filasport.com> domain name is identical to Complainant’s FILA SPORT mark.
2. Respondent does not have any rights or legitimate interests in the <filasport.com> domain name.
3. Respondent registered and used the <filasport.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fila Luxembourg
S.a.r.l., is a sportswear manufacturer that markets its products under the FILA
SPORT mark, which Complainant registered with the United States Patent and
Trademark Office (“USPTO”) on
Respondent, Comar Ltd.,
registered the <filasport.com> domain name on
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.
Respondent, Comar Ltd.,
registered the <filasport.com> domain name on
Complainant contends that
domain name is identical to its FILA SPORT mark. The <filasport.com> domain name differs from Complainant’s mark in two ways:
(1) the space has been removed from the mark; and (3) the generic top-level
domain (“gTLD”) “.com” has been added.
The Panel finds that the removal of a space does nothing to distinguish
a domain name from a mark that it incorporates for the purposes of Policy ¶
4(a)(i). The Panel also finds that the
addition of a gTLD does not reduce the likelihood of confusion between the
domain name and the mark, because every domain name must contain a top-level
domain. Therefore, the Panel finds that
these changes do not create any distinguishing difference in the disputed
domain name, and so the <filasport.com> domain name is identical to Complainant’s FILA SPORT mark
pursuant to Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding
that eliminating the space between terms of a mark still rendered the
<gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES
mark); see also Buffalo News v.
Barry, FA 146919 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <filasport.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Respondent has failed to respond to these proceedings. See 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); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known by the <filasport.com> domain name nor has it ever been the owner or licensee of the FILA SPORT mark. Respondent has been identified as “Comar Ltd.,” and nothing in the WHOIS record for the disputed domain name lists Respondent as any variant on the FILA SPORT mark. Respondent also has failed to show any evidence contrary to Complainant’s contentions. The Panel therefore finds that Respondent is not commonly known by the <filasport.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also 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).
Respondent is making a
general offer to sell the <filasport.com> domain name for $14,410, which the Panel
presumes to be far above Respondent’s out-of-pocket costs. Previous panels have found offering to sell a
disputed domain name for more than the out-of-pocket
costs to a respondent can fail to be either 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). Consequently, under these circumstances this
Panel finds that Respondent’s use of
the <filasport.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use 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 Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As Respondent is making a general offer to sell the <filasport.com> domain name for far more than Respondent’s out-of-pocket costs, Complainant contends. The Panel agrees and finds that Respondent has registered and is using the <filasport.com> domain name in bad faith pursuant to 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 World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
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 <filasport.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 15, 2009
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