Road Runner Sports, Inc. v. Domain Proxies, LLC
Claim Number: FA1003001316559
Complainant is Road
Runner Sports, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <roadrunnersport.com>, registered with Dotregistrar.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2010.
On March 31, 2010, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <roadrunnersport.com> domain name is registered with Dotregistrar and that Respondent is the current registrant of the name. Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 April 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 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@roadrunnersport.com by e-mail. Also on April 1, 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 April 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <roadrunnersport.com> domain name is confusingly similar to Complainant’s ROAD RUNNER SPORTS mark.
2. Respondent does not have any rights or legitimate interests in the <roadrunnersport.com> domain name.
3. Respondent registered and used the <roadrunnersport.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Road Runner Sports, Inc.,
markets and sells athletic products online and through its physical stores in
the
Respondent registered the <roadrunnersport.com> domain name on November 18, 2003. The disputed domain name resolves to Complainant’s website at <roadrunnersports.com> through Complainant’s affiliate program.
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 registered its ROAD RUNNER SPORTS mark with the
USPTO (Reg. No. 1,789,491 issued August 24, 1993). Previous panels have held that a trademark
registration with a federal trademark agency, such as the USPTO, is sufficient
in order for a complainant to establish rights in the mark under Policy ¶ 4(a)(i). See Miller
Brewing
Complainant claims that Respondent’s <roadrunnersport.com>
domain name is confusingly similar to Complainant’s ROAD RUNNER SPORTS
mark. In the disputed domain name,
Complainant contends that Respondent has simply removed the spaces separating
the terms of Complainant’s mark and also removed the letter “s” from the last
term, “sport,” of Complainant’s mark.
Complainant alleges that Respondent has also added the generic top-level
domain (“gTLD”) “.com” to Complainant’s mark.
Previous panels have refused to allow the removal of spaces and letters
and the addition of a gTLD to be considered as adequately distinguishing a
disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Keystone Publ’g., Inc. v. UtahBrides.com,
D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com>
domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark
because the domain name simply lacked the letter “s”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec.
31, 2007) (finding that “spaces are impermissible and a generic top-level
domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain
names. Therefore, the panel finds that
the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”); see
also Jerry Damson, Inc. v.
The Panel determines that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent does not have any
rights or legitimate interests in the <roadrunnersport.com> domain
name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a
sufficient 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 disputed 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 Do
the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertions
in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Complainant alleges that Respondent is not commonly known by the <roadrunnersport.com> domain name and therefore had not developed legitimate rights or interests in the disputed domain name under Policy ¶ 4(c)(ii). Complainant contends that Respondent is not sponsored by Complainant and is not affiliated with Complainant except for Respondent’s involvement in Complainant’s affiliate fee program. Complainant claims that Respondent has not been granted permission or a license to utilize Complainant’s ROAD RUNNER SPORTS mark. The WHOIS information does not indicate that the domain name registrant is similar to the <roadrunnersport.com> domain name. Respondent has failed to provide any evidence that would contradict the evidence provided by Complainant. The Panel has not found any evidence in the record that would support a finding that Respondent is commonly known by the <roadrunnersport.com> domain name. Consequently, the Panel determines that Respondent is not commonly known by the <roadrunnersport.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also 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).
According to Complainant, Respondent uses the <roadrunnersport.com>
domain name to resolve to Complainant’s official website. Complainant alleges that Respondent is taking
advantage of Complainant’s affiliate fee program. Under Complainant’s affiliate fee program,
Respondent receives a fee for each Internet user redirected to Complainant’s
website. Respondent is using a
confusingly similar disputed domain name in order to benefit from this program
which violates the affiliate agreement.
The Panel concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use of the <roadrunnersport.com>
domain name pursuant to Policy ¶ 4(c)(iii).
See Deluxe Corp. v.
Moreover, Complainant claims that Respondent’s use of the <roadrunnersport.com>
domain name constitutes typosquatting.
Respondent’s <roadrunnersport.com> domain name is a common
misspelling of Complainant’s ROAD RUNNER SPORTS mark because the disputed
domain name simply removes the letter “s” from Complainant’s mark. Respondent is attempting to take advantage of
Internet users, who when typing Complainant’s mark, accidentally forget to add
the letter “s.” The Panel finds that Respondent’s
use of the disputed domain name, that is a common misspelling of the ROAD
RUNNER SPORTS mark, is further evidence that Respondent fails to establish
rights or legitimate interests in the <roadrunnersport.com> domain
name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent is using the <roadrunnersport.com> domain name in bad faith under Policy ¶ 4(b)(iv). Respondent’s <roadrunnersport.com> domain name resolves to Complainant’s website at <roadrunnersports.com>. According to Complainant, Respondent receives a fee from Complainant’s affiliate program for each Internet user redirected to Complainant’s website. Respondent takes advantage of Internet users that have erred in typing Complainant’s mark and profits off of Complainant’s goodwill that Complainant has developed in the mark. The Panel finds Respondent’s use of the <roadrunnersport.com> domain name to receive commercial gain from Complainant’s affiliate program constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”).
In addition, Complainant contends that Respondent has engaged in typosquatting. Respondent’s <roadrunnersport.com> domain name is a common misspelling of Complainant’s ROAD RUNNER SPORTS mark because the disputed domain name differs from Complainant’s mark by one letter, the removal of the letter “s.” Therefore, the Panel concludes that Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
The Panel determines 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 <roadrunnersport.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 7, 2010
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