Almost Awesome, Inc. v. USAthletics
Claim Number: FA1009001344656
PARTIES
Complainant is Almost Awesome, Inc. (“Complainant”), represented by John R. Hayes, of Hayes/Lango LLP, Illinois, USA. Respondent is USAthletics (“Respondent”), represented by Thomas F. Lebens, of Fitch Even Tabin & Flannery, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walkjogrun.com>, registered with GoDaddy.com, Inc.
PANEL
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.
Jonas Gulliksson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 2, 2010.
On September 3, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <walkjogrun.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 September 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@walkjogrun.com by e-mail. Also on September 7, 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.
A timely Response was received and determined to be complete on September 27, 2010.
On October 14, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The domain name <walkjogrun.com> is identical to the Complainant’s registered trademark and service mark WalkJogRun.
The Respondent has no rights or legitimate interests with respect to the disputed domain name. Specifically, because Respondent has failed to make any active use of the domain name for the entire time it has been registered, it cannot and does not have any interest or rights in the disputed domain name.
Based on the Complainant’s information and belief, the Respondent has never been known by the domain name.
Up until July 14, 2010 when the Complainant notified Godaddy.com of the potential trademark infringement, the Respondent was intentionally attempting to attract, for commercial gain, Internet users to the Respondent's web site by creating a likelihood of confusion with Complainant's mark. Complainant has rights in the mark WALKJOGRUN and also owns the domain name <WalkJogRun.net>. The domain name registered by the Respondent resolved to a parked website on Godaddy.com. On information and belief, the Respondent presumably received click-through fees for displaying links to Complainant's competitors and other websites on the parked website which resolves from the identical disputed domain name. Thus, Respondent is attempting to profit from the goodwill and customer loyalty associated with Complainant's mark,
The fact that the Respondent was notified of Complainant's use of the mark more than five years ago, coupled with the subsequent renewals of the disputed domain name constitutes bad faith under the Policy. And it should be further underscored that, on information and belief, the Respondent has not, nor has it ever, used the domain name in connection with a bona fide offering of goods or services.
Thus, taken together, the Respondent's failure to use the domain name in connection with a bona fide offering of goods or services, its failure to resolve the domain name to an active website for the past ten years, and its repeated renewal of the domain name after becoming aware of Complainant's rights in the mark all demonstrate bad faith on behalf of the Respondent.
B. Respondent
This UDRP Complaint simply boils down to the Complainant coveting the domain name in dispute.
The Respondent is a university track and field coach who registered the disputed domain name in February 2000, well before Complainant registered the domain name <walkjogrun.net> in 2005. Shortly after, the Complainant began soliciting the Respondent to transfer the .com version of the domain name, notably without alleging any superior rights to those of the Respondent.
The disputed domain name was registered long before the Complainant can claim any trademark rights in the combination of the three generic words "Walk," "Jog" and "Run." Moreover, the Complainant’s trademark application was refused registration based on the mere descriptiveness of the word combination "Walk," "Jog," "Run.". It was overcome by a claim of acquired distinctiveness, where the 5-year use threshold was passed sometime in 2010.
The Respondent currently coaches track and field at the University of California - Berkeley, where he has held the position of Director of Operations for Track and Field since 2007. The Respondent has enjoyed a successful career as an athletic coach since 1984, including coaching four Olympic athletes and fifteen NCAA individual champions. Thus, the Respondent has a demonstrated legitimate interest in the sport of track and field, including the basic building blocks of the sport, walk - jog - run.
The Respondent registered the disputed domain name in February 2000, more than five years before the Complainant started to use the mark. Under such circumstances, it is impossible to find bad faith in the registration of the domain name. Furthermore, the Respondent has not used the domain name in bad faith. The Respondent has never offered to sell its domain name to the Complainant.
Contrary to allegations by the Complainant, the Respondent has never intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark. The Respondent has never received any compensation resulting from the GoDaddy.com content on the standard parked page for the Respondent's domain name. In fact, the Respondent has made no use of its domain name and has simply renewed its registration.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
This Panel wishes to clarify that the purpose of the Policy is to quickly address clear cases of so called “cyber squatting”.
The Complainant has submitted evidence of the registration of its service mark WalkJogRun through the United States Patent and Trademark Office (USPTO).
Previous panel decisions have held that registration of a mark is prima facie evidence of the right to the mark, regardless of whether the registration of the domain predates the registration of the trademark. This view is based the absence of an explicit requirement in paragraph 4 (a)(i) of the Policy that such right must predate the domain name registration (see e.g. Metro-Goldwyn-Mayer Studios Inc. v. World Readable, FA868828 (Nat. Arb. Forum Jan. 31, 2007) or Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827, (WIPO, Sep. 23, 2001) (holding that “The Complainant has provided the registration documents for its DIGITAL VISION marks, within the USA and the EU. Registration for these marks postdates the domain name registration; however, Paragraph 4(a)(i) does not require that the trade mark be registered prior to the domain name.”).
Instead, the dates of the respective registrations may have an importance when reviewing the other elements of the Policy.
The Panel therefore finds, in line with established consensus, that the Complainant has established rights to the mark WALKJOGRUN and any further enquiry into whether common-law rights has been established is not necessary.
It is well established consensus that the mere addition of .com does not adequately distinguish the domain name from the mark, see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that the disputed domain name is identical to the trademark registration of the Complainant. The first element of the Policy is thus fulfilled.
Along with the majority of Panel decisions, this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain names at issue. See Document Technologies, Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); see also Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
The Complainant has asserted that the Respondent is not commonly known by the domain name. This is supported by the WhoIs information and is further undisputed by the Respondent. Moreover, the Complainant contends that the disputed domain name has not been used and has at least since the year 2005 been parked by GoDaddy.com. This is also undisputed by the Respondent.
Under the Policy, legitimate interests in a domain name may be demonstrated by the Respondent by showing that:
(1) Before any notice of the dispute Respondent used, or made preparations to use, the domain name in connection with a bona fide offering of goods or services;
(2) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(3) Respondent is making legitimate, non-commercial and fair use of the domain name without intent of commercial gain or to misleadingly divert consumers or to tarnish the trademarks at issue.
The Respondent’s assertions that his position as track and field coach at the University of California – Berkeley, and his successful career as an athletic coach since 1984, including coaching four Olympic athletes and fifteen NCAA individual champions, constitutes a legitimate interest that is, in this Panel’s opinion, not sufficient to show legitimate interest, see Gallup, Inc. v. Amish Country Store, FA 96209 (Nat’l Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); Guerlain S.A. v. Peikang, D2000-0055 (WIPO Mar. 21, 2000) (“[I]n the absence of any license or permission from the Complainant to use any of its Trademark or to apply for or use any Domain Name incorporating those Trademark, it is clear that no actual or contemplated bona fide or legitimate use of the Domain Name could be claimed by Respondent.”).
In light of the fact that there has been no demonstrated preparations to use, or any use at all, by the Respondent the Panel finds that the second element of the Policy is fulfilled.
It is well establish consensus that the prior registration of the domain name to that of the trademark rules out bad faith registration. The consensus view of e.g. WIPO panelists, as reported in the WIPO Decision Overview, is that “when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.”
The Respondent has noted that the Complainant admits that it did not have any right in its mark prior to 2005. The Panel therefore finds that the Respondent could not have registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) when the Respondent registered the domain name prior to Complainant establishing any rights in its mark, see Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration).
This conclusion is not rebutted by the reasoning in the panel decision cited by the Complainant, Eastman Sporto Group, LLC v. Jim and Kenny, Case No. D2009-1688 (WIPO March 1, 2010). Instead, this Panel finds ample support for it’s finding here. The Respondent has registered a descriptive or suggestive domain name, ten years before a trademark has received protection through overcoming the descriptiveness through acquired distinctiveness on the basis of use. Moreover, the Respondent has been consistent in its non-use and parking of the disputed domain name.
The only thing which speaks in favour of the Complainant’s allegations in this case is the renewal of the registration. However, the non-use of the domain name through the parking service provided by the registrar is not enough to support a finding of bad faith registration. Moreover, it is evident from the previous contacts between the Complainant and the Respondent that the Complainant has not relied upon any rights to a trademark. It is only recently that the Complainant has begun to assert its rights to the mark.
It is this Panel’s opinion that the Policy’s criteria of bad faith use and registration should not be obsolete; rather it should be interpreted as it has been for some time, in the light of the purpose of the Policy, i.e. to prevent cyber squatting.
Subsequently, the Complainant has failed to prove the third element of the Policy.
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Jonas Gulliksson,
Panelist
Dated: October 28, 2010
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