Washington Nationals Baseball Club, LLC v. Cayman Ninety Business c/o Domain Administrator
Claim Number: FA1012001364961
Complainant is Washington Nationals Baseball Club, LLC (“Complainant”), represented by Richard S. Mandel of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Cayman Ninety Business c/o Domain Administrator (“Respondent”), Guatemala.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalsbaseball.com>, registered with Rebel.com.
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 December 23, 2010; the National Arbitration Forum received payment on December 23, 2010.
On December 31, 2010, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <nationalsbaseball.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 January 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2011 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@nationalsbaseball.com. Also on January 5, 2011, 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 January 27, 2011, 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nationalsbaseball.com> domain name is confusingly similar to Complainant’s NATIONALS mark.
2. Respondent does not have any rights or legitimate interests in the <nationalsbaseball.com> domain name.
3. Respondent registered and used the <nationalsbaseball.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Washington Nationals Baseball Club, LLC, is the owner of the Major League Baseball Club known as the “Washington Nationals.” Complainant owns multiple trademark registrations for the NATIONALS mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 3,248,240 issued May 29, 2007, filed November 22, 2004;
Reg. No. 3,248,283 issued May 29, 2007, filed November 22, 2004;
Reg. No. 3,349,404 issued December 4, 2007, filed November 22, 2004;
Reg. No. 3,345,144 issued November 27, 2007, filed November 22, 2004; and
Reg. No. 3,345,145 issued November 27, 2007, filed November 22, 2004.
Respondent, Cayman Ninety Business c/o Domain Administrator, registered the <nationalsbaseball.com> domain name on December 15, 2005. The disputed domain name resolves to a website offering commercial, pay-per-click links relating to Complainant and its goods and services, as well as to numerous other unrelated third parties.
Respondent has previously been the respondent in at least three other UDRP proceedings in which the disputed domain names were transferred to the respective complainants. See Constellation Brands Inc. v. Cayman Ninety Business, FA 1271177 (Nat. Arb. Forum Aug. 11, 2009); see also RML-Bel Air, LLC v. Cayman Ninety Business, FA 1327815 (Nat. Arb. Forum June 19, 2010); see also Univision Communications Inc. v. Cayman Ninety Business, FA 1337367 (Nat. Arb. Forum Aug. 30, 2010).
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 multiple trademark registrations for the NATIONALS mark with the USPTO:
Reg. No. 3,248,240 issued May 29, 2007, filed November 22, 2004;
Reg. No. 3,248,283 issued May 29, 2007, filed November 22, 2004;
Reg. No. 3,349,404 issued December 4, 2007, filed November 22, 2004;
Reg. No. 3,345,144 issued November 27, 2007, filed November 22, 2004; and
Reg. No. 3,345,145 issued November 27, 2007, filed November 22, 2004.
The Panel finds that registering a mark with the USPTO conclusively proves Complainant’s rights in the NATIONALS mark for the purposes of Policy ¶ 4(a)(i), dating back to the filing date of the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registration for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel finds these USPTO trademark registrations sufficient even when Respondent lives or operates in a different country than where the mark is registered. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that Respondent’s <nationalsbaseball.com> domain name is confusingly similar to Complainant’s NATIONALS mark because the disputed domain name consists of Complainant’s mark combined with the descriptive term “baseball” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a descriptive term to Complainant’s mark does not negate confusing similarity according to Policy ¶ 4(a)(i). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003) (finding that the <wellfargobank.com> domain name is confusingly similar to the WELLS FARGO mark, because altering the mark by one letter and adding “…the word ’bank,’ a word that both describes the type of business that Complainant engages in and is included in its <wellsfargobank.com> domain name, does not alleviate any confusing similarity.”). The Panel also finds that an added gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. 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.”). Thus, the Panel finds that Respondent’s <nationalsbaseball.com> domain name is confusingly similar to Complainant’s NATIONALS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
According to Policy ¶ 4(a)(ii), Complainant is first required to present a prima facie case against Respondent, asserting that Respondent lacks rights and legitimate interests in the disputed domain name. Once a prima facie case has been established, the burden shifts to Respondent to show that it does possess rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has adequately put forth a prima facie case in these proceedings and thus the burden now rests on Respondent. Respondent, however, failed to satisfy that burden as it has not responded to the Complaint. Without a Response from Respondent, the Panel may infer that Complainant’s allegations are true and that Respondent lacks rights 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel elects, however, to consider the evidence in the record according to the Policy ¶ 4(c) factors in order to determine whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent has not engaged in any legitimate business under the <nationalsbaseball.com> domain name or NATIONALS mark and is not a licensee of Complainant. The WHOIS information for the disputed domain name identifies the registrant as “Cayman Ninety Business,’ which has no association with the disputed domain name. The Panel concludes that Respondent is not commonly known by the <nationalsbaseball.com> domain name and accordingly has no rights and legitimate interests for the purposes of Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. 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); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant asserts that Respondent uses the <nationalsbaseball.com> domain name to direct Internet users to a links website, featuring pay-per-click links to websites offering both related and unrelated goods and services. The Panel finds that maintaining a wrongly appropriated domain name in connection with a commercial pay-per-click links site is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent has previously been the respondent in at least three other UDRP proceedings in which the disputed domain names were transferred to the respective complainants. See,, Constellation Brands Inc. v. Cayman Ninety Business, FA 1271177 (Nat. Arb. Forum Aug. 11, 2009); see also RML-Bel Air, LLC v. Cayman Ninety Business, FA 1327815 (Nat. Arb. Forum June 19, 2010); see also Univision Communications Inc. v. Cayman Ninety Business, FA 1337367 (Nat. Arb. Forum Aug. 30, 2010). The Panel finds that this evidence of previous adverse UDRP decisions indicates that Respondent has a pattern of domain name registration that shows bad faith registration and use according to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Complainant contends that the website resolving from Respondent’s <nationalsbaseball.com> domain name showcases a variety of pay-per-click links related to and competing with Complainant, such as “baseball tickets” and “New York Baseball Tickets,” as well as other unrelated links to third parties. The Panel finds that diverting Internet traffic to these third party sites under Complainant’s mark disrupts Complainant’s business and shows bad faith registration and use according to 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 Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant argues that Respondent uses Complainant’s NATIONALS mark in the <nationalsbaseball.com> domain name in order to capitalize on the fame and goodwill of Complainant’s mark and attract customers to Respondent’s website. Complainant asserts that Respondent attempts to create a likelihood of confusion as to the existence of a relationship between Complainant and Respondent in order to profit from the pay-per-click links advertised on the resolving website. The Panel finds that these activities are evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
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 <nationalsbaseball.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 31, 2011
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