Victory Team Apparel, Inc. v Jorge Romero
Claim Number: FA1005001323301
Complainant is Victory
Team Apparel, Inc. (“Complainant”), represented by Xavier Morales, of Law Office of Xavier Morales,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <campusteamwear.com>, registered with Moniker Online Services, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2010.
On May 10, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <campusteamwear.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@campusteamwear.com. Also on May 14, 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 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 (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 <campusteamwear.com> domain name is identical to Complainant’s CAMPUS TEAM WEAR mark.
2. Respondent does not have any rights or legitimate interests in the <campusteamwear.com> domain name.
3. Respondent registered and used the <campusteamwear.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victory Team Apparel, Inc., manufactures, sells and distributes cheerleading apparel as well as accessories, shoes, poms and bags. Complainant has used the CAMPUS TEAM WEAR mark in connection with the sale, distribution, and advertising of Complainant’s cheerleading apparel and related accessories since it began operating in 1999. In addition, Complainant registered the domain name <cheerleadingonline.com> on March 4, 1998. This domain name resolves to Complainant’s official website, which prominently displays the CAMPUS TEAM WEAR mark and logo.
Respondent, Jorge Romero, registered the <campusteamwear.com> domain name on January 31, 2006. The disputed domain name resolves to a website that displays links to third-party websites, some of which compete with Complainant’s business.
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 does not hold a trademark registration for the
CAMPUS TEAM WEAR mark. However, federal
trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Previous panels
have found that a governmental registration is not required so long as the
Complainant can establish common law rights through proof of sufficient
secondary meaning associated with the mark.
See SeekAmerica Networks Inc. v.
Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); see also Artistic
Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8,
2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration
if a complainant can establish common law rights in its mark). The Panel finds accordingly.
Complainant argues it has acquired common law rights in the CAMPUS TEAM WEAR mark through sufficient secondary meaning associated with the mark. Complainant contends it has used the CAMPUS TEAM WEAR mark in connection with the sale, distribution, and advertising of Complainant’s cheerleading apparel and related accessories since it began operating in 1999. Complainant states that it has used the mark in both national and international commerce. In addition, Complainant registered the domain name <cheerleadingonline.com> on March 4, 1998. This domain name resolves to Complainant’s official website, which prominently displays the CAMPUS TEAM WEAR mark and logo. The Panel finds Complainant has made continuous and extensive commercial use of the mark since at least 1999. Therefore, the Panel finds common law rights in the CAMPUS TEAM WEAR predating Respondent’s January 31, 2006 registration of the disputed domain name under Policy ¶ 4(a)(i). See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Complainant contends Respondent’s <campusteamwear.com> domain name is identical to its CAMPUS TEAM WEAR mark. Respondent fully incorporates Complainant’s mark in the disputed domain name. Respondent then affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds this slight addition does not render Respondent’s disputed domain name distinct from Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). Therefore, the Panel finds Respondent’s <campusteamwear.com> domain name is identical to Complainant’s CAMPUS TEAM WEAR mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first show Respondent lacks rights or legitimate interests in the <campusteamwear.com> domain name. After Complainant makes this prima facie case, Respondent must prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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.”). Although Respondent failed to submit a Response, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant claims Respondent is not licensed or otherwise authorized to use its mark in a domain name. Furthermore, the WHOIS information lists “Jorge Romero” as the registrant of the disputed domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues Respondent uses the <campusteamwear.com>
domain name to display links to third-party websites, some of which compete
with Complainant’s business. Complainant
claims that Respondent presumably receives click-through fees from this
use. The Panel finds Respondent’s use of
the disputed domain name to profit from the receipt of click-through fees does
not constitute a bona fide offering
of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair
use under Policy ¶ 4(c)(iii). See Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum
Sept. 8, 2000) (finding that the respondent’s website, which is blank but for
links to other websites, is not a legitimate use of the domain names); see also Jerry Damson, Inc. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent’s <campusteamwear.com> domain name diverts Internet users seeking Complainant’s products to Respondent’s website. Complainant asserts Respondent uses the disputed domain name to offer links to websites that compete with Complainant’s business. The Panel finds this behavior disrupts Complainant’s business and provides evidence of registration and use in bad faith 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 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).
Complainant asserts Respondent is attempting to profit through its use of the disputed domain name by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. As previously discussed, Respondent’s <campusteamwear.com> domain name is confusingly similar to Complainant’s CAMPUS TEAM WEAR. Furthermore, Respondent most likely receives click-through fees. Therefore, the Panel finds this use provides additional evidence of Respondent’s registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <campusteamwear.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 15, 2010
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