Head Technology GmbH v. Reliable Holdings, LLC c/o John Garnett
Claim Number: FA1004001316798
Complainant is Head Technology GmbH (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <headfootwear.com>, registered with Enom, Inc.
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 April 1, 2010.
On April 1, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <headfootwear.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 April 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@headfootwear.com by email. Also on April 8, 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 May 5, 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 "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 <headfootwear.com> domain name is confusingly similar to Complainant’s HEAD mark.
2. Respondent does not have any rights or legitimate interests in the <headfootwear.com> domain name.
3. Respondent registered and used the <headfootwear.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Head Technology GmbH, is a manufacturer and distributor of athletic products, clothing and accessories specifically for skiing and tennis under its HEAD mark. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its HEAD mark (e.g. Reg. No. 1,695,827 issued on June 23, 1992).
Respondent registered the <headfootwear.com> domain name on November 12, 2001. Respondent’s disputed domain name resolves to a website that displays third-party links to both competing and unrelated businesses to Complainant. Respondent’s website also displays a link that states “This domain may be for sale. Buy this domain” which when clicked on redirects Internet users to the <acquirethisname.com> domain name that allows Internet users to make an offer to purchase the disputed domain name.
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.
The Panel finds that Complainant has established rights in its HEAD mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g. Reg. No. 1,695,827 issued on June 23, 1992). 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 contends that Respondent’s <headfootwear.com> domain name is confusingly similar to Complainant’s HEAD mark. Complainant argues that the disputed domain contains its entire mark while including the descriptive term “footwear” that implicates a large portion of Complainant’s business. The Panel finds that Respondent’s <headfootwear.com> domain name is confusingly similar to Complainant’s HEAD mark under Policy ¶ 4(a)(i) where it: (1) includes Complainant’s entire mark; (2) adds the descriptive term “footwear” that describes a portion of Complainant’s business; and (3) includes the generic top-level domain (“gTLD”) “.com.” See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or
legitimate interests in the disputed domain name. Complainant must make a prima facie case in support of these allegations under Policy ¶ 4(a)(ii). Upon
Complainant making a prima facie case
the burden of proof shits to the Respondent to establish that it does have
rights and 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 Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
The Panel finds that Complainant has established its prima facie case. The Panel may assume that Respondent’s
failure to respond to these proceedings is evidence that Respondent does not
have rights or legitimate interests in the disputed domain name. 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 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.”). However, the Panel will evaluate the evidence
on record in its determination of Respondent’s rights and legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant first argues that
Respondent’s use of the <headfootwear.com>
domain name to display third-party links of competing
and unrelated businesses to Complainant is evidence that Respondent lacks
rights and legitimate interests.
Complainant contends that Respondent’s use of the confusingly similar
disputed domain name to collect click-through fees for third-party links
displayed on its website is not in connection with a bona fide offering of goods or services or a legitimate
noncommercial or fair use. The Panel finds
that Respondent’s use of the disputed domain does not amount to a use in
connection with 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 Jerry Damson, Inc. v.
Complainant further argues
that it has not granted Respondent permission to use its HEAD mark in any way,
and that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <headfootwear.com>
domain name identifies ”Reliable
Holdings, LLC c/o John Garnett” as the registrant of the disputed domain. Respondent
has not offered any evidence to that show it is commonly known by the <headfootwear.com>
domain name.
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain name and therefore lacks rights and legitimate interests in the
disputed domain name pursuant to 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 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).
Respondent’s
disputed domain name resolves to a website that displays a hyperlink
that states “This domain may be for sale.
Buy this domain” which when clicked on redirects Internet users to the
<acquirethisname.com> domain name that allows Internet users to make an
offer to purchase the disputed domain name.
Previous panels have found that a Respondent’s open offer to sell a
disputed domain name is evidence that Respondent lacks rights and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii), and this Panel
so finds. See Wal-Mart Stores, Inc. v.
Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct
purporting to sell the domain name suggests it has no legitimate use); see also Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning
domains does not constitute a bona fide offering of goods and services or a
legitimate noncommercial or fair use of domains.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent has registered and used
the disputed domain name in bad faith through its conduct in attempting to sell
the disputed domain name to the general public.
The Panel finds that Respondent’s listing of the disputed domain name
for sale at the <acquirethisname.com> website where Respondent is
requesting offers for the transfer of the disputed domain is evidence of bad faith
registration and use under Policy ¶ 4(b)(i).
See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3,
2000) (finding bad faith where the respondent offered the domain names for
sale); see also Little Six, Inc. v. Domain For
Complainant also
contends that Respondent’s use of the confusingly similar <headfootwear.com> domain name to
display third-party links to competitors of Complainant in the athletic
products, clothing and footwear markets is further evidence of bad faith
registration and use by Respondent. The
Panel finds that Respondent has registered and used the disputed domain name in
bad faith under Policy ¶ 4(b)(iii) where it diverts
Internet users to the competitors of Complainant thereby causing a disruption
of Complainant’s business interests. 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 Persohn
v. Lim, FA 874447 (Nat. Arb. Forum
Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶
4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors).
Lastly, Complainant argues
that Respondent is using the confusingly similar <headfootwear.com>
domain name to attract Internet users to its
website where Respondent profits from click-through links associated with the
third-party links displayed thereon. The
Panel finds that Respondent registered and used the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) where it maintains a directory website
under the trademark infringing <headfootwear.com> domain name and presumably
receives monetary compensation for the third-party links displayed on its
website. 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
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 <headfootwear.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 17, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum