Pittsburgh Associates v. Eighty Business Names / Domain Administrator
Claim Number: FA1105001389242
Complainant is Pittsburgh Associates (“Complainant”), represented by Richard S. Mandel of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Eighty Business Names / Domain Administrator (“Respondent”), Grand Cayman.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <piratesbaseball.com>, registered with Rebel.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2011; the National Arbitration Forum received payment on May 18, 2011.
On May 18, 2011, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <piratesbaseball.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 May 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 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@piratesbaseball.com. Also on May 20, 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 June 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <piratesbaseball.com> domain name is confusingly similar to Complainant’s PIRATES mark.
2. Respondent does not have any rights or legitimate interests in the <piratesbaseball.com> domain name.
3. Respondent registered and used the <piratesbaseball.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pittsburgh Associates, is the owner of the Major League Baseball club known as the Pittsburgh PIRATES. Complainant owns the PIRATES mark and has used it for decades to identify its baseball club, for exhibition services, and for a wide variety of goods and services associated with the club. Complainant holds numerous trademark registrations for its PIRATES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,013,729 issued June 17, 1975).
Respondent, Eighty Business Names / Domain Administrator, registered the <piratesbaseball.com> domain name on May 1, 2004. The disputed domain name resolves to a directory website offering commercial links relating to Complainant’s ball club as well as links to unrelated services such as airline tickets, hotels, and car rentals. Some of the related links offer the re-sale of Pirates baseball game tickets and Pirates merchandise.
Respondent has been a party to prior UDRP proceedings that have resulted in finding of bad faith and transfer against Respondent. See Telefonaktiebolaget L M Ericsson v. Eighty Bus. Names, D2010-1485 (WIPO Oct. 16, 2010); see also Dinosaur Rests. LLC v. Eighty Bus. Names, D2010-1421 (WIPO Oct. 3, 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.
The Panel finds that Complainant has established rights in the PIRATES mark through its trademark registration with the USPTO, pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel also finds that Respondent is not required to register its mark within the Grand Cayman, the country where Respondent is located or operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <piratesbaseball.com> domain name is confusingly similar to its PIRATES mark. The domain name includes the entire PIRATES mark and alters it merely by adding the descriptive word “baseball” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of the descriptive word “baseball,” which references Complainant’s baseball club, does not adequately distinguish the disputed domain name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The addition of a gTLD also does not prohibit a finding of confusing similarity. 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.”). The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s PIRATES mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has no rights and legitimate interests in the <piratesbaseball.com> domain name. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Here, Complainant has made a prima facie showing in support of its claims. Respondent never submitted a response to the Complaint, which the Panel may interpret as a waiver of any claim to rights or legitimate interests under Policy ¶ 4(a)(ii). 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.”). However, the Panel will look to the record to find whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain name because the WHOIS information identifies Respondent as “Eighty Business Names / Domain Administrator,” which is not similar to the disputed domain name. Complainant also contends that Respondent has never engaged in any legitimate business under the PIRATES mark and is not a licensee of Complainant authorized to use the mark. The Panel concludes that Respondent is not commonly known by the <piratesbaseball.com> domain name, according to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent uses the <piratesbaseball.com> domain name to operate a website with third-party links to various sites, some competing with Complainant through the re-sale of Complainant’s baseball tickets and merchandise containing the PIRATES mark. Respondent presumably generates click-through fees from the third-party links. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to redirect Internet users to its own website for its own benefit is not 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has engaged in a pattern of bad faith registration as it has prior UDRP proceedings against it that have resulted in findings of bad faith and transfer. See Telefonaktiebolaget L M Ericsson v. Eighty Bus. Names, D2010-1485 (WIPO Oct. 16, 2010); see also Dinosaur Rests. LLC v. Eighty Bus. Names, D2010-1421 (WIPO Oct. 3, 2010). The Panel finds that such a pattern of bad faith registration indicates bad faith use and registration in the instant proceeding pursuant 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 Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Respondent’s registration and use of the <piratesbaseball.com> domain name disrupts its baseball club business and operation. Internet users intending to purchase Complainant’s baseball tickets or club merchandise may find Respondent’s website and purchase similar goods from one of the linked third-parties as a result. The Panel finds that Respondent’s registration and use of the disputed domain name for this purpose constitutes bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
The Panel infers that Respondent collects click-through fees through the third-party links on the resolving website. Respondent creates a likelihood of confusion as to Complainant’s association with the resolving website by using Complainant’s PIRATES mark within the domain name and offering links to tickets and merchandise that would be of interest to Complainant’s customers. Respondent profits from this confusion through the receipt of click-through fees. The Panel therefore finds that Respondent’s registration and use of the <piratesbaseball.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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 Panel finds that 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 <piratesbaseball.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 22, 2011
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