Reebok International Limited v. NA
Claim Number: FA0212000137093
PARTIES
Complainant is Reebok International Limited, Lancaster, UNITED KINGDOM (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP. Respondent is NA, New York, NY, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reeboktennis.com>, registered with Dotster, Inc.
On February 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he or has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 16, 2002; the Forum received a hard copy of the Complaint on December 26, 2002.
On December 17, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the domain name <reeboktennis.com> is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, 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 January 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 29, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@reeboktennis.com by e-mail. As no postal address was given by Respondent, no attempt was made to transmit the Commencement Notification by post.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <reeboktennis.com> domain name is confusingly similar to Complainant’s REEBOK mark.
2. Respondent does not have any rights or legitimate interests in the <reeboktennis.com> domain name.
3. Respondent registered and used the <reeboktennis.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Reebok International
Limited, sells footwear and apparel, including tennis footwear and apparel,
under the registered REEBOK mark. Complainant holds many registrations for this
mark, including U.S. Reg. No. 1,133,740, registered on April 22, 1980 on the
Principal Register of the United States Patent and Trademark Office (“USPTO”).
Complainant spends tens of millions
of dollars annually advertising and promoting its REEBOK mark. As part of its
promotional and sales efforts, Complainant operates a website at
<reebok.com>.
Respondent registered the <reeboktennis.com> domain name on May 9, 2002, and is not licensed or authorized to use Complainant’s REEBOK mark for any purpose. Respondent hosts a webpage at the domain name titled “Who Are the African Gazelles (Reeboks) of Tennis?” This website compares certain African-American tennis players to “African gazelles” and provides links to websites relating to these tennis players. The disputed domain name also hosts advertisements for third party service providers.
On the same day that <reeboktennis.com> was registered, the <reeboktennis.net> domain name was registered, from the same Registrar as the disputed domain name and by an entity who also identified itself as “NA”.
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.
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 has established rights in the REEBOK mark through registration on the Principal Register of the USPTO as well as through widespread and continuous use of the mark.
Respondent’s <reeboktennis.com>
domain name is confusingly similar
to Complainant’s REEBOK mark. Respondent’s addition of the generic word
“tennis” to Complainant’s registered mark does not distinguish the domain name
from the mark, as the word “tennis” is descriptive of some of the products
Complainant produces under its REEBOK mark. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity); see also Space
Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where Respondent’s domain name combines Complainant’s mark
with a generic term that has an obvious relationship to Complainant’s
business).
Accordingly, the Panel finds that the <reeboktennis.com> domain name is confusingly similar to Complainant’s REEBOK mark under Policy ¶ 4(a)(i).
The Panel notes that as Respondent failed to file a response to the Complainant, the Panel may draw all reasonable and factually supported inferences in favor of Complainant. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).
The Panel may view Respondent’s lack of response as evidence that it has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Complainant alleges that Respondent’s use of the <reeboktennis.com> domain name does not fall under any of the elements outlined in Policy ¶ 4(c)(i)-(iii). As this is the case, Complainant has made a prima facie case against Respondent, and met its burden under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no rights or legitimate interests is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent uses the disputed domain
name to host a website entitled “Who Are The African Gazelles (Reeboks) of
Tennis.” The Panel views this as a creative yet transparent attempt to
capitalize on the popularity of Complainant’s mark, and concludes that such
activity does not equate to a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii), nor does it evidence a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i). See Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use).
Nothing suggests to the Panel that
Respondent is “commonly known by” the name REEBOK TENNIS or <reeboktennis.com>,
and the Respondent has not come forward to prove otherwise. As such, the Panel
finds that Policy ¶ 4(c)(ii) does not apply to Respondent. See Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one
“would be hard pressed to find a person who may show a right or legitimate
interest” in a domain name containing Complainant's distinct and famous NIKE
trademark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat.
Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <reeboktennis.com> domain name under Policy ¶ 4(a)(ii).
In determining whether the disputed domain name was registered and used in bad faith, the Panel will not just analyze Respondent’s behavior in light of Policy paragraph 4(b), but will look to the totality of the circumstances surrounding Respondent’s registration and use of the domain name. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).
Looking to the totality of the circumstances, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the REEBOK mark prior to its registration of the infringing <reeboktennis.com> domain name. Registration of a domain name with actual knowledge of another’s rights in a mark constitutes bad faith registration pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
In light of the fame of Complainant’s mark and the Panel’s inference
that Respondent had actual knowledge of those rights when it registered the <reeboktennis.com>
domain name, the Panel finds that Respondent’s nominal
use of the infringing domain name evidences opportunistic bad faith use. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names
are so obviously connected with the Complainants that the use or registration
by anyone other than Complainants suggests ‘opportunistic bad faith’”); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”)
The Panel thus finds that Respondent registered and used the <reeboktennis.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <reeboktennis.com> domain name be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: February 17, 2003
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