Claim Number: FA1002001308052
Complainant is Wilson Sporting Goods Co. (“Complainant”), represented by Terence
P. O'Brien, of Wilson Sporting Goods Co.,
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is <wilsonracquet.net>, registered with Enom.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2010.
On February 16, 2010, Enom confirmed by e-mail to the National Arbitration Forum that the <wilsonracquet.net> domain name is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 February 19, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 11, 2010 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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:
name is confusingly similar to Complainant’s
2. Respondent does not have any rights or legitimate interests in the <wilsonracquet.net> domain name.
3. Respondent registered and used the <wilsonracquet.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wilson Sporting
Goods Co., has registered its
Respondent, Wilson Racquet c/o Khai Nguyen, registered the disputed domain name July 20, 2005. The disputed domain name resolves to a website featuring tennis racquets, tennis equipment bags, tennis balls, tennis grips, tennis strings and stringing machines identical to the goods sold by the 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.
Complainant asserts it has rights in its
Respondent’s <wilsonracquet.net> domain name is confusingly similar to Complainant’s WILSON mark because Respondent’s domain name incorporates the dominant feature of Complainant’s mark, adds a generic term related to Complainant’s business, and adds the generic top-level domain “.net.” The Panel finds that such minor alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy 4(a)(i). See 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 Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case in support of these allegations, the burden to establish that it has rights or legitimate interests in the disputed domain name shifts to the Respondent pursuant to Policy ¶ 4(a)(i). The Panel finds Complainant has established a prima facie case in support of its complaint, shifting the burden to the Respondent. In light of Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record in light of Policy ¶ 4(c). See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuan to paragraph 4 (a)(ii) of the Policy.”); see also G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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 the <wilsonracquet.net>
domain name lists “Wilson Racquet, Khai Nguyen”
as the registrant. Complainant asserts Respondent is not licensed or otherwise
authorized to use the
The disputed domain name resolves to a website that offers counterfeit versions of Complainant’s products. The Panel finds that Respondent’s use of the <wilsonracquet.net> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a making legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds Respondent’s registration and use of the <wilsonracquet.net> domain name to operate a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4 (b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent uses the <wilsonracquet.net> domain name to
offer counterfeit products. Internet users, searching for Complainant’s
products, may become confused as to Complainant’s sponsorship or affiliation
with the disputed domain name and resolving website. Respondent attempts to
profit from this confusion through its product sales. Therefore, the Panel finds
Respondent’s use of the disputed domain name constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(finding that the respondent’s use of the <saflock.com> domain name to
offer goods competing with the complainant’s illustrates the respondent’s bad
faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)); see also Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged
in bad faith use and registration by using domain names that were identical or
confusingly similar to the complainant’s mark to redirect users to a website
that offered services similar to those offered by the complainant); see also State Fair of
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 <wilsonracquet.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 2, 2010
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