The Finish Line, Inc. v. Dragon Domains Limited c/o John Stewart
Claim Number: FA1005001322634
Complainant is The Finish Line, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <fnishline.com>, registered with FABULOUS.COM PTY LTD.
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 May 3, 2010.
On May 4, 2010, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <fnishline.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 May 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 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@fnishline.com. Also on May 5, 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 June 1, 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 (the "Rules") "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 <fnishline.com> domain name is confusingly similar to Complainant’s FINISH LINE mark.
2. Respondent does not have any rights or legitimate interests in the <fnishline.com> domain name.
3. Respondent registered and used the <fnishline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Finish Line, Inc., uses its FINISH LINE mark in connection with athletic footwear, active wear, sporting goods and accessories, offered in retail stores and online at Complainant’s official website resolving from the <www.finishline.com> domain name. Complainant has registered its FINISH LINE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,772,105 issued May 18, 1993).
Respondent, Dragon Domains Limited c/o John Stewart, registered the <fnishline.com> domain name on September 9, 2002. The disputed domain name resolves to a website that displays links to third-party websites including competitors of Complainant.
Respondent has been the respondent in prior UDRP proceedings, which resulted in the transfer of the disputed domain names to the respective complainants. See Sony Corp. v. John Stewart Last, Dragon Domains Limited, D2008-0812 (WIPO July 2, 2008); see also Aktiebolaget Swedbank v. Dragon Domains Limited, John Stewart Last, D2008-1840 (WIPO Jan. 23, 2009).
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 the FINISH LINE mark due to its trademark registration
with the USPTO (Reg. No 1,772,105 issued May 18, 1993). The Panel finds Complainant’s registration of
its FINISH LINE mark with the USPTO is sufficient to establish Complainant’s
rights in the mark pursuant to Policy ¶
4(a)(i). See
Complainant alleges that Respondent’s <fnishline.com> domain name is
confusingly similar to Complainant’s FINISH LINE mark. Complainant argues that the removal of a
letter in the mark (“i” in FINISH), removal of the space between the terms, and
the addition of a generic top-level domain (“gTLD”) (“.com”) are not sufficient
differences to distinguish the disputed domain name from Complainant’s
mark. The Panel finds that these
alterations are minor and render Respondent’s <fnishline.com> domain name confusingly similar to
Complainant’s FINISH LINE mark pursuant to Policy
¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the
<pfzer.com> domain name was confusingly similar to the complainant’s
PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb.
Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain
name was confusingly similar to the complainant’s HACRES mark because it
omitted the letter “e” from the mark and added the generic top-level domain
“.com”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30,
2007) (finding that the elimination of spaces between terms and the addition of
a gTLD do not establish distinctiveness from the complainant’s mark under
Policy ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v.
Zhongqi, FA 917070 (Nat. Arb. Forum
Apr. 9, 2007) (“Elimination of punctuation and
the space between the words of Complainant’s mark, as well as the addition of a
gTLD does not sufficiently distinguish the disputed domain name from the mark
pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Previous panels have determined that this is sufficient to establish a prima facie case under Policy ¶ 4(a)(ii), shifting the burden to Respondent to assert it has rights or legitimate interests in the disputed domain name. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also 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.”). The Panel may choose to view Respondent’s lack of response to this proceeding as evidence of Complainant’s allegation. However, the Panel, in its discretion, may choose to review the evidence provided by the Complainant as to Respondent’s rights or legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
Complainant contends that no authorization or license has been given to Respondent to use the FINISH LINE mark. The WHOIS information for the <fnishline.com> domain name lists “Dragon Domains Limited c/o John Stewart” as the registrant. This listing does not provide the Panel with evidence contrary to Complainant’s allegation that Respondent is not commonly known by the <fnishline.com> domain name. The Panel finds that Respondent is not commonly known by 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 Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s <fnishline.com>
domain name resolves to a web directory which displays links to
third-party websites, including links to competitors of Complainant. The Panel finds the disputed domain name does
not resolve to a website with a bona fide
offering of goods and services, pursuant to Policy ¶ 4(c)(i), or to a website
providing a legitimate noncommercial or fair use, pursuant to Policy ¶
4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
Complainant alleges that Respondent’s disputed domain name
is an intentional misspelling of the FINISH LINE mark, due to its removal of
one letter from the mark. Complainant
further alleges that Respondent is capitalizing on this misspelling to
misdirect Internet users seeking Complainant’s goods. The Panel finds that such intentional
misspelling constitutes typosquatting and is evidence that Respondent lacks
rights or legitimate interests in the <fnishline.com>
domain name under Policy ¶ 4(a)(ii).
See Microsoft Corp. v. Domain
Registration
The Panel finds that the elements of Policy ¶ 4(a)(ii) have been satisfied.
Complainant alleges that Respondent has a pattern of
cybersquatting due to several adverse UDRP proceedings against Respondent. Complainant has offered other UDRP
proceedings where Respondent was found to have registered and used other
disputed domain names in bad faith. See Sony Corp. v. John Stewart Last, Dragon
Domains Limited, D2008-0812 (WIPO July 2, 2008); see also Aktiebolaget Swedbank v. Dragon Domains Limited, John Stewart
Last, D2008-1840 (WIPO Jan. 23, 2009).
The Panel finds Respondent has engaged in bad faith registration and use
under Policy ¶ 4(b)(ii) by registering a domain name in order to prevent the
Complainant from reflecting its mark in a corresponding domain name when there
is a pattern of Respondent’s engaging in such conduct. See Sport
Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent]
registered the <usgames.com> domain name in order to prevent
[Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain
name [pursuant to Policy ¶ 4(b)(ii)].
The pattern of such conduct is established, inter alia, by the public
decisions of two different UDRP proceedings [against] Respondent.”); see also Westcoast
Contempo Fashions Ltd. v.
Complainant asserts that Respondent’s disputed domain name
resolves to a website that includes hyperlinks to third-party websites of
Complainant’s competitors, which diverts Complainant’s business to its
competitors. The Panel finds this
diversion of business from Complainant is evidence of bad faith registration
and use 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
Am. Airlines, Inc. v.
Complainant asserts that the confusingly similar disputed domain name will confuse Internet users seeking the goods provided by Complainant. Internet users may become confused as to Complainant’s authorization of or affiliation with the website resolving from the disputed domain name. Complainant further asserts that Respondent profits from this confusion through receipt of click-through fees when Internet users click on the displayed third-party links. The Panel finds Respondent’s presumed commercial gain from a confusingly similar disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel has previously found Respondent’s disputed domain name to be a form of typosquatting. The Panel finds that typosquatting is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); 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 finds that the elements of Policy ¶ 4(a)(iii) have 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 <fnishline.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 14, 2010
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