Ferrari Importing Company d/b/a Gamma Sports v. Comtek Internet
Claim Number: FA1002001308836
Complainant is Ferrari Importing Company d/b/a Gamma
Sports (“Complainant”), represented
by Carl A. Ronald, of The Ronald Law Group LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gammaracquets.com>, registered with Dotster.
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
On March
4, 2010, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 24, 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 postmaster@gammaracquets.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <gammaracquets.com> domain name is confusingly similar to Complainant’s GAMMA mark.
2. Respondent does not have any rights or legitimate interests in the <gammaracquets.com> domain name.
3. Respondent registered and used the <gammaracquets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ferrari Importing Company, is a manufacturer
and distributor for tennis rackets and accessories under its GAMMA mark. Complainant owns a trademark with the United
States Patent and Trademark Office (“USPTO”) for its GAMMA mark (Reg. No.
3,285,229 issued on
Respondent registered the <gammaracquets.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 registered the <gammaracquets.com>
domain name on
Complainant further argues that it has common law rights in the GAMMA mark that date back to 1976 when it began to operate under the “Gamma” name in the manufacturing and distribution of tennis rackets and accessories. Complainant contends that its continuous use of its GAMMA mark in commerce for twenty-five years before Respondent registered the <gammaracquets.com> domain name is evidence that its mark carries a secondary meaning in the tennis racket and accessory production business. The Panel finds that Complainant has established rights in its GAMMA mark under Policy ¶ 4(a)(i) where it has used its mark in commerce for twenty-five years because it can be inferred that this use led to Respondent’s registration of a confusingly similar domain name. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Complainant further argues that the <gammaracquets.com> domain name is confusingly similar to its GAMMA mark because it contains its mark in its entirety and merely adds the descriptive term “racquets” and the generic top level domain (“gTLD”) “.com.” The Panel finds that Respondent’s disputed domain name that contains Complainant’s mark in its entirety and merely adds the descriptive term “racquet” which is a commonly used spelling of Complainant’s racket products, and adds the gTLD “.com” is confusingly similar to Complainant’s mark under 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 Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). Therefore, the Panel finds that Respondent’s <gammaracquets.com> domain name is confusingly similar to Complainant’s GAMMA mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights
or legitimate interests in the <gammaracquets.com>
domain name. Complainant is required to
make a prima facie case in support of
these allegations. Once the Complainant
has produced a prima facie case the
burden shifts to Respondent to show it has a right or legitimate interest in
the disputed domain name. 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 pursuant to paragraph 4(a)(ii) of the Policy.”); see
also 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)). The Panel finds that Complainant
has established a prima facie
case. Due to the Respondent’s failure to
respond to these proceedings the Panel may assume Respondent does not have any
right or legitimate interest in the disputed domain name. See Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO
Complainant asserts that it has
never granted Respondent permission to use its mark, nor is Respondent commonly
known as the disputed domain name. The
WHOIS information identifies “Comtek Internet” as the registrant of the <gammaracquets.com> domain name and
Respondent does not offer any evidence that it is commonly known by disputed
domain name. The Panel finds that
Respondent lacks rights and legitimate interests in the disputed domain name
pursuant to 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Complainant further
argues that Respondent is not using the <gammaracquets.com> domain name in connection with a bona fide offering of goods or
services. Respondent’s disputed domain
name resolves to a website that displays third-party links to the websites of
businesses selling similar products as Complainant. The Panel finds that Respondent’s use of the
disputed domain name to display third-party links to competitors of
Complainant, presumably for financial gain, is not a use in connection with a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶
4(c)(iii). See Royal
Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb.
Forum Aug. 2, 2006) (finding that the operation of a commercial web directory
displaying various links to third-party websites was not a use in connection
with 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), as the respondent presumably earned “click-through” fees for each
consumer it redirected to other websites); see
also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (finding that the respondent was not using the <tesco-finance.com>
domain name in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use by maintaining a web page with
misleading links to the complainant’s competitors in the financial services
industry).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent registered and used the
<gammaracquets.com> domain
name in bad faith because it is using its confusingly similar domain name to
divert Internet users seeking Complainant to Complainant’s competitors. Complainant argues that this type of use
disrupts Complainant’s business. The
Panel finds that Respondent has registered and used the disputed domain name in
bad faith 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 St. Lawrence Univ. v. Nextnet
Tech, FA 881234 (Nat. Arb. Forum
Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users
seeking information on Complainant’s educational institution to competing
websites, Respondent has engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).”).
Complainant also argues that Respondent’s use of the confusingly similar domain name to maintain a directory website where it presumably collects click-through fees for the links it displays on its website is further evidence of bad faith registration and use. The Panel finds that Respondent’s use of the confusingly similar domain name to attract Interent users to its website where it displays third-party links to the websites of Complainant’s competitors and is likely gaining commercially from those links is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); 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 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 <gammaracquets.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 13, 2010
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