Shimano Inc. v. Peter Fox
Claim Number: FA1003001310824
Complainant is Shimano Inc. (“Complainant”), represented by Rod
S. Berman, of Jeffer, Mangels, Butler & Marmaro, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shimanofishingshop.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2010.
On March 2, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <shimanofishingshop.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 March 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@shimanofishingshop.com. Also on March 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <shimanofishingshop.com> domain name is confusingly similar to Complainant’s SHIMANO mark.
2. Respondent does not have any rights or legitimate interests in the <shimanofishingshop.com> domain name.
3. Respondent registered and used the <shimanofishingshop.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shimano, Inc., is a manufacturer and seller of fishing and sporting equipment. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SHIMANO mark (e.g., Reg. No. 989,509 issued on July 30, 1974). Complainant also owns several international trademark registrations for its SHIMANO mark and variations thereof.
Respondent registered the <shimanofishingshop.com> domain name on November 4, 2009. Respondent’s disputed domain name resolves to a website displaying Complainant’s fishing products for sale.
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 owns numerous trademark registrations with the USPTO for its SHIMANO mark (e.g., Reg. No. 989,509 issued on July 30, 1974). Complainant further submits that it owns several international trademark registrations for its mark. The Panel finds that Complainant has demonstrated rights in its SHIMANO mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. 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.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <shimanofishingshop.com> domain name is confusingly similar to its SHIMANO mark. Complainant notes that the disputed domain name contains its SHIMANO mark in its entirety while adding the descriptive term “fishing shop” and the generic top level domain (“gTLD”) “.com.” The Panel finds that the <shimanofishingshop.com> domain name is confusingly similar to Complainant’s SHIMANO mark under Policy ¶ 4(a)(i) where it combines Complainant’s mark with the term “fishing shop” that describes Complainant’s business. The Panel further finds that the addition the gTLD “.com” is irrelevant for purposes of Policy ¶ 4(a)(i). See 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); 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).”).
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 <shimanofishingshop.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 the Respondent to show it does have rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Complainant contends that Respondent is not commonly known by the disputed domain name, and further that Complainant has not granted Respondent permission to use its mark or sell its products. The WHOIS information lists “Peter Fox” as the registrant of the disputed domain name and Respondent has not offered any evidence indicating it is commonly known by the disputed domain name. The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain 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).
Complainant further argues that Respondent is using the confusingly similar <shimanofishingshop.com> domain name to sell Complainant’s products. Complainant alleges Respondent has not been granted authorization to sell Complainant’s products. Complainant contends that this use is not in connection with a bona fide offering of goods or services or a noncommercial or fair use because Respondent is profiting from the confusion of Internet users as to the affiliation of Respondent’s website. The Panel finds that Respondent’s use of the <shimanofishingshop.com> domain name to display Complainant’s fishing products for sale, without Complainant’s authorization, is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent registered and used the
<shimanofishingshop.com>
domain name in bad faith because it is using the disputed domain name to sell
Complainant’s products that it is not authorized to sell. Complainant argues that this use creates a
disruption in business both of Complainant and Complainant’s authorized
sellers. The Panel finds that
Respondent’s use of the disputed domain name to sell the fishing products of
Complainant without authorization to do so is evidence of bad faith
registration and use under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat.
Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX
mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also
Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered
each of the disputed domain names in order to gain customers and to disrupt
Complainant's business of authorizing dealers to sell its CATERPILLAR
equipment.”).
Respondent’s disputed domain name
resolves to a website that offers Complainant’s fishing products for sale. Complainant argues that Respondent is using a
confusing similarity between its <shimanofishingshop.com>
domain name and Complainant’s SHIMANO mark to attract Internet users to its
website for financial gain. The Panel
finds that Respondent’s appropriation of Complainant’s mark to confuse Internet
users as to the affiliation of its website where it makes money selling
Complainant’s goods is further evidence of bad faith registration and use under
Policy ¶ 4(b)(iv). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of
the <compaq-broker.com> domain name to sell the complainant’s products
“creates a likelihood of confusion with Complainant's COMPAQ mark as to the
source, sponsorship, or affiliation of the website and constituted bad faith
pursuant to Policy ¶ 4(b)(iv)”); see also
Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding
bad faith where the respondent used the disputed domain name to sell the
complainant’s products without permission and mislead Internet users by
implying that the respondent was affiliated with 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 <shimanofishingshop.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 14, 2010
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