University of San Diego v. Hot Nix Webs
Claim Number: FA1010001355316
Complainant is University of San Diego (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois USA. Respondent is Hot Nix Webs (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mytorerostore.com>, <thetorerostore.com>, <usdtorerostore.com>, and <my-torerostore.com>, registered with GODADDY.COM, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2010; the National Arbitration Forum received payment on October 29, 2010.
On October 28, 2010, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <mytorerostore.com>, <thetorerostore.com>, <usdtorerostore.com>, and <my-torerostore.com> domain names are registered with GODADDY.COM, INC. and that Respondent is the current registrant of the names. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@mytorerostore.com, postmaster@thetorerostore.com, postmaster@usdtorerostore.com, and postmaster@my-torerostore.com. Also on November 1, 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 November 29, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <mytorerostore.com>, <thetorerostore.com>, <usdtorerostore.com>, and <my-torerostore.com> domain names are confusingly similar to Complainant’s TOREROS mark.
2. Respondent does not have any rights or legitimate interests in the <mytorerostore.com>, <thetorerostore.com>, <usdtorerostore.com>, and <my-torerostore.com> domain names.
3. Respondent registered and used the <mytorerostore.com>, <thetorerostore.com>, <usdtorerostore.com>, and <my-torerostore.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, the University of San Diego, uses the registered mark TOREROS for its athletic teams. The TOREROS mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,700,914 issued July 14 1992). Complainant also uses the mark on promotional material affiliated with those teams including: note books, decals, stickers, posters, and etc.
Respondent, Hot Nix Webs, registered the disputed domain names August 25, 2010. The disputed domain names resolve to a website featuring links to content unrelated to Complainant.
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 alleges sufficient rights in the TOREROS mark to pursue this claim. The Panel agrees. A complainant can evidence rights in a mark by producing a federal trademark registration. The Complainant has registered its TOREROS mark with the USPTO (Reg. No. 1,700,914 issued July 14 1992). The Panel finds this registration to establish the necessary rights under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
The Panel also finds that all four disputed domain names, <mytorerostore.com>, <thetorerostore.com>, <usdtorerostore.com>, and <my-torerostore.com>, are confusingly similar to Complainant’s TOREROS mark. Respondent has used many common tactics attempting to differentiate his domain names from the TOREROS mark. Each tactic has been found by previous panels to insufficiently distinguish a domain name from a previously established mark.
Respondent’s disputed domain names all contain Complainant’s TOREROS mark in its entirety. The Panel finds that this evidence alone weighs heavily in favor of finding the disputed domain names confusingly similar to Complainant’s mark. See Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”). All of Respondent’s disputed domain names also include a misspelled version of the term “store” (“tore” in the disputed domain names). Complainant has argued that Respondent’s inclusion of this misspelled term, capitalizes on Complainant’s announcement that it would be naming its campus bookstores “Toreros Store.” The disputed domain names also incorporate other generic or descriptive terms including “my,” “the,” and “usd” (a likely abbreviation for The University of Sand Diego). The Panel concludes that the addition of generic terms or terms descriptive of Complainant’s own business do not sufficiently distinguish the disputed domain names from Complaiant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). In the <my-torerostore.com> domain name also adds a hyphen, which the Panel finds is insubstantial to differentiate between the domain name and Complainant’s mark. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). Additionally, Respondent’s disputed domain names all append the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, pursuant to the requirments of Policy ¶ 4(a)(i), the Panel finds that Respondent’s <mytorerostore.com>, <thetorerostore.com>, <usdtorerostore.com>, and <my-torerostore.com> domain names are confusingly similar to Complainant’s TOREROS mark.
The Panel finds Policy ¶ 4(a)(i) has been met.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. The Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names because of Respondent’s failure to respond to the Complaint. Still, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
The first determination the Panel makes is that Respondent is not commonly know by the disputed domain names. This evidence weighs in favor of the Panel finding that Respondent has no rights or legitimate interests in the domain names. The WHOIS information for the disputed domain names do not provide any indication that Respondent is commonly known by any of the disputed domain names. The WHOIS information of all four disputed domain names indicate that the registrant is known as “Hot Nix Webs” and not any variation of the disputed domain names. See 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); see also 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
The Panel finds that Respondent’s use of the disputed domain names to divert Internet users in order to market and sell unrelated products in neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Respondent’s domain names resolve to websites that contain lists of unrelated links. The Panel presumes that Respondent benefits from these links being displayed to Internet users. This is a diversion for profit and evidence that is neither 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). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Due to the evidence indicating that Respondent is not commonly known by the disputed domain names and the evidence indicating that Respondent is using the domain names to divert Internet users, the Panel finds that Policy ¶ 4(a)(ii) is met.
The Panel finds that Respondent is using the disputed domain names to attract users to its websites for commercial gain. When a Respondent uses confusingly similar domain names in this nature the evidence indicates the presence of a bad faith registration and use. 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 Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The facts in this case are similar to the above cited precedent. Respondent has chosen four domain names that are confusingly similar to Complainant’s mark. Internet users searching for material related to Complainant’s mark may mistakenly end up at Respondent’s websites. Their arrival itself may generate revenue for Respondent. The Panel further presumes that Respondent benefits in some way from these visitors, whether it be through click-through fees or sponsored advertising. The Panel finds that Respondent’s actions indicate bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mytorerostore.com>, < thetorerostore.com>, < usdtorerostore.com>, and < my-torerostore.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 9, 2010
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