The Finish Line, Inc. v. Pioneer Enterprises Limited c/o Pioneer Enterprises
Claim Number: FA1005001322641
Complainant is The Finish Line, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwfinishline.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on May 3, 2010.
On May 4, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <wwwfinishline.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 May 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@wwwfinishline.com. Also on May 6, 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 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant holds multiple
trademark registrations for its FINISH LINE mark with the United States Patent
and Trademark Office (“USPTO”) (including Reg. No. 1,960,883, issued March 5, 1996) in connection with
men’s, women’s and children’s athletic and leisure footwear and
activewear.
Respondent registered the
disputed domain name on January 13, 2003.
The disputed domain name resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
Respondent’s <wwwfinishline.com> domain name is confusingly similar to Complainant’s FINISH LINE mark.
Respondent is not commonly known by the disputed domain name.
Complainant has not licensed, authorized or permitted Respondent to register a domain name incorporating Complainant’s FINSIH LINE mark.
Respondent does not have any rights to or legitimate interests in the domain name <wwwfinishline.com>.
Respondent registered and uses the <wwwfinishline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established
rights in its FINISH LINE mark for purposes of Policy ¶ 4(a)(i) by virtue of
its registration of the mark with the United States Patent and Trademark Office
(“USPTO”). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26,
2006) (finding that a complainant had established rights in the PENTIUM,
CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). A
complainant need not register the mark in the country in which a respondent
resides or operates in order to establish that complainant’s rights in the
mark. See Renaissance
Hotel Holdings, Inc. v. Renaissance
Respondent’s
<wwwfinishline.com> domain name incorporates the entirety of
Complainant’s FINISH LINE mark, and merely removes the space between
the words and adds the prefix “www” and the generic top-level domain (“gTLD”)
“.com.” These distinctions are not
sufficient to avoid a finding of confusing similarity between the domain name
and the mark. See Bond & Co. Jewelers, Inc. v.
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).
Similarly, the addition of
the “www” prefix fails to avoid confusing similarity between the disputed
domain name and Complainant’s mark. See Bank of Am. Corp. v. InterMos, FA
95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that a
respondent’s domain name <wwwbankofamerica.com> is confusingly similar to
a complainant’s BANK OF
Therefore, the Panel finds that Respondent’s <wwwfinishline.com> domain name is confusingly
similar to Complainant’s FINISH LINE mark pursuant to Policy ¶ 4(a)(i).
Under this head of the Policy, Complainant must first make out
a prima facie case in support of its
allegations that Respondent lacks rights to and legitimate interests in the
disputed domain name. The burden then
shifts to Respondent to prove that it has rights to or legitimate interests in
the disputed domain. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must
first make out a prima facie case that a respondent lacks rights to and
legitimate interests in a disputed domain name, at which point the burden
shifts to that respondent to show that it does have such rights or legitimate
interests).
Complainant has established a prima facie case on the point of Respondent’s rights or interests
in the contested domain name. We may
therefore infer that Respondent’s failure to submit a Response in this
proceeding is evidence that Respondent lacks rights to and 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.
Nonetheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that
Respondent is not commonly known by the disputed domain name. The WHOIS information indicates that the registrant of the disputed domain name is “Pioneer Enterprises Limited c/o Pioneer Enterprises” which does not resemble the disputed domain name. Complainant further asserts, without objection from Respondent, that it has not licensed, authorized or permitted Respondent to register a domain name incorporating Complainant’s FINSIH LINE mark. On this record, we conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by a disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, including the pertinent WHOIS information, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We also observe that there is no dispute as to Complainant’s allegation that the disputed domain name resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. In the circumstances here poresented, we presume that Respondent receives income, in the form of click-through or similar fees, from the visits of Internet users to the websites resolving from the featured links. Respondent’s use of the disputed domain name in this manner is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the business of a 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 domain pursuant to Policy ¶ 4(c)(iii)); see also 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), where a respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
It is evident that Respondent registered the disputed domain name to take advantage, through a practice called typo-squatting, of a common typographical error made by Internet users in searching the Internet. Respondent’s registration of the <wwwfinishline.com> domain name, which incorporates a common misspelling of Complainant’s FINISH LINE mark and is formed by removing the period separating the “www” from Complainant’s mark is evidence of typo-squatting and therefore indicates Respondent’s lack of rights to and legitimate interests in the disputed domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that a respondent’s <wwwdinersclub.com> domain name, a typo-squatted version of a complainant’s DINERS CLUB mark, was evidence that that respondent lacked rights to or legitimate interests in the disputed domain name); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests in a contested domain name where a respondent used the typo-squatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint filed against it under the Policy).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to display
links to third-parties in competition with Complainant in the athletic apparel
and footwear market. As a result, an
Internet user seeking Complainant’s products may instead purchase similar
products from one of Complainant’s competitors based on the display of links on
the resolving website. Respondent’s use
of the disputed domain name as alleged constitutes disruption of Complainant’s
business and is evidence of bad faith registration and use of the contested
domain name pursuant to Policy ¶ 4(b)(iii). See
Respondent uses the contested disputed domain name to attract Internet users seeking to access the products sold under Complainant’s FINISH LINE mark. Respondent likely profits through the receipt of click-through or similar fees from the display of commercial links to Complainant’s competitors on Respondent’s resolving website. We are persuaded from this that Respondent registered and uses the disputed domain name for commercial gain and that this is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using it to offer links to third-party websites featuring services similar to those offered by a complainant); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a contested domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant’s web address to its own website, likely profiting in the process).
We have already concluded that Respondent engaged in the practice of typo-squatting by using a common typographical error in forming its domain name. Typo-squatting is itself evidence of Respondent’s bad faith registration and use of the contested domain name under Policy ¶ 4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003):
Registering a domain name which entirely incorporates a famous mark
with the addition of the “www” prefix evidences not only actual knowledge of a
trademark holder’s rights in that mark but an intent to ensnare Internet users
who forget to type the period between the “www” and a second-level domain name
while attempting to reach Complainant’s URL.
See also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <wwwfinishline.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 9, 2010
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