Collective Brands Cooperatief U.A. v. ecole c/o Eric Cole
Claim Number: FA1006001328023
Complainant is Collective Brands Cooperatief U.A. (“Complainant”), represented by Matthew
R. Mills, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <abovetherim.net> registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and <abovetherim.com>, registered with GoDaddy.com, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2010.
On June 3, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <abovetherim.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. On June 4, 2010, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <abovetherim.net> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. GoDaddy.com, Inc. and Melbourne IT, Ltd. d/b/a Internet Names Worldwide have verified that Respondent is bound by the GoDaddy.com, Inc. and Melbourne IT, Ltd. d/b/a Internet Names Worldwide registration agreements 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 June 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@abovetherim.net and postmaster@abovetherim.com. Also on June 4, 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 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <abovetherim.net>and <abovetherim.com> domain names are identical to Complainant’s ABOVE THE RIM mark.
2. Respondent does not have any rights or legitimate interests in the <abovetherim.net> and <abovetherim.com> domain names.
3. Respondent registered and used the <abovetherim.net> and <abovetherim.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Collective
Brands Cooperatief U.A., uses its ABOVE THE RIM mark in connection with its
sale of sportswear, including shirts, shorts, sweat suits, jackets, footwear,
and hats. Complainant owns a trademark
registation for the ABOVE THE RIM mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 1,643,684 issued May 7, 1991).
Respondent, ecole c/o Eric Cole, registered the <abovetherim.net> domain name on July 19, 2001 and the <abovetherim.com> domain name on December 31, 1999. The <abovetherim.com> domain name previously resolved to a website advertising the domain name for sale and displaying pay-per-click links and banners. Currently, the <abovetherim.com> domain name is not in active use. The <abovetherim.net> domain names resolves to a webpage offering domain name registration services by a company called “Verio.”
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 owns a trademark
registation for the ABOVE THE RIM mark with the USPTO (Reg. No. 1,643,684
issued May 7, 1991). The Panel finds
that Complainant’s registration of its mark with the USPTO establishes its rights
in the mark for the purposes of Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June
4, 2007) (finding that “Complainant’s
timely registration with the USPTO and subsequent use of the BIG TOW mark
establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Complainant alleges that
Respondent’s <abovetherim.net>
and <abovetherim.com> domain
names are identical to Complainant’s ABOVE THE RIM mark. The disputed domain names modify
Complainant’s mark only by deleting the spaces between the words and adding the
generic top-level domains (“gTLDs”) “.com” or “.net.” According to Policy ¶ 4(a)(i),
the Panel finds that neither of those changes eliminates the confusing
similarity between the disputed domain names and Complainant’s mark because the
changes do not alter Complainant’s mark in any substantial way but instead
merely conform to the requirements of domain name formation. See Diesel v. LMN, FA 804924 (Nat. Arb.
Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to
complainant’s mark because “simply eliminat[ing] the space between terms and
add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to
differentiate the disputed domain name from Complainant’s VIN DIESEL mark under
Policy ¶ 4(a)(i)”); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see
also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept.
7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is
irrelevant for purposes of determining whether a domain name is identical to a
mark.”). Thus, the Panel concludes that
Respondent’s <abovetherim.net>
and <abovetherim.com> domain
names are identical to Complainant’s ABOVE THE RIM mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶
4(a)(i) has been satisfied.
When alleging that Respondent does not possess rights and legitimate interests in the disputed domain names, Complainant must put forth a prima facie case in accord with Policy ¶ 4(a)(ii) requirements. As the Panel deems Complainant to have satisfied its burden in this proceeding, Respondent now bears the burden of demonstrating its rights and legitimate interests in the disputed domain names. The Respondent, however, has failed to respond. The Panel infers from Respondent’s silence that Respondent does not contest Complainant’s allegations and has no argument to present in favor of its rights and legitimate interests. See 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.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel elects to consider the full record, however, in light of the Policy ¶ 4(c) to determine whether Respondent possesses any rights and legitimate interests in the disputed domain names.
Complainant argues that the WHOIS information for both the <abovetherim.com> and <abovetherim.net> domain names lists
the registrant as “Eric Cole.”
Complainant asserts that this information, coupled with the lack of
other evidence showing a nominal association between Respondent and the
disputed domain names, indicates that Respondent is not commonly known by the
disputed domain names. The Panel
determines that as Respondent is neither licensed to use Complainant’s mark nor
commonly known by the disputed domain names, Respondent does not possess rights
and legitimate interests in the disputed domain names according 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
Complainant contends that Respondent’s first use of the <abovetherim.com> domain name was to advertise the domain name for sale. The Panel finds that general offers to sell the disputed domain name do not establish a bona fide offering of goods or services or a legitimate noncommercial or fair use in keeping with Policy ¶¶ 4(c)(i) or 4(c)(iii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also 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).
Complainant alleges that in addition to offering the <abovetherim.com> domain name for
sale, Respondent also used the disputed domain name to advertise pay-per-click
links and banners to third-party websites.
The Panel finds that using Complainant’s mark in the disputed domain
name to display such generic links does not constitute a bona fide offering of goods or services or a legitimate
noncommercial or fair use according to Policy ¶¶ 4(c)(i) or 4(c)(iii). See
Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com>
domain name to display a list of hyperlinks, some of which advertise
Complainant and its competitors’ products.
The Panel finds that this use of the disputed domain name does not
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii).”); see also
Wells Fargo & Co. v.
Lin Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites is neither 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) because the registrant presumably receives
compensation for each misdirected Internet user).
Complainant asserts that Respondent is not currently
actively using the <abovetherim.com>
domain name as the disputed domain name resolves to a page stating the webpage
cannot be found. The Panel finds that
Respondent’s failure to actively use the disputed domain name indicates a lack
of rights and legitimate interests according to Policy ¶ 4(c)(i)
and ¶ 4(c)(iii). See Hewlett-Packard
Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005)
(“The Panel finds that the [failure to make an active use] of a domain name
that is identical to Complainant’s mark is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also TMP
Int’l, Inc. v. Baker Enters., FA 204112
(Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's
[failure to make an active use] of the domain name does not establish rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Complainant contends that Respondent’s <abovetherim.net> domain name resolves to a webpage offering domain name registration services by the company “Verio.” As “Verio” has no apparent association with the <abovetherim.net> domain name and Respondent is using Complainant’s mark to divert Internet users to this unrelated commercial website, the Panel finds that Respondent’s use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant argues that Respondent’s <abovetherim.com> domain name
initially redirected Internet users to a webpage advertising that the domain
name was for sale. The Panel finds that
Respondent’s willingness to sell the disputed domain name without using it for
any other legitimate purpose indicates that Respondent purchased the disputed
domain name with the intent to sell it, which shows bad faith registration and
use according to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶
4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale).
Complainant alleges that at the same time the <abovetherim.com> domain name was being offered for sale, it was also displaying pay-per-click links to third-party websites. As Internet users would be attracted to Respondent’s disputed domain name due to the fame of Complainant’s mark and then might subsequently click on one of the advertised links, Respondent was using the disputed domain name to mislead and attract Complainant’s customers for Respondent’s own commercial gain. The Panel finds Respondent’s activities reveal bad faith registration and use under Policy ¶ 4(b)(iv). 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 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)).
Complainant contends that Respondent’s <abovetherim.net> domain name resolves to a commercial website offering domain name registration services. As this website is presumably for Respondent’s commercial use, the Panel finds that Respondent’s use of Complainant’s mark in the disputed domain name to attract Internet users to Respondent’s site likely profits Respondent and indicates bad faith registration and use according to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant argues that Respondent’s <abovetherim.com> domain name is not currently in active use as the domain name resolves to a webpage displaying no content aside from a message indicating that the webpage cannot be found. The Panel finds that Respondent’s failure to actively use the disputed domain shows bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds 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 <abovetherim.net> and <abovetherim.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 8, 2010
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