Padres L.P. v. Private Whois Service c/o SDPadres.com
Claim Number: FA1105001389243
Complainant is Padres L.P. (“Complainant”), represented by Richard S. Mandel of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Private Whois Service c/o SDPadres.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sdpadres.com>, registered with Internet.bs Corp.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2011; the National Arbitration Forum received payment on May 17, 2011.
On May 21, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <sdpadres.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@sdpadres.com. Also on May 23, 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 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sdpadres.com> domain name is confusingly similar to Complainant’s PADRES mark.
2. Respondent does not have any rights or legitimate interests in the <sdpadres.com> domain name.
3. Respondent registered and used the <sdpadres.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Padres L.P., is the owner of the Major League Baseball club known as the SAN DIEGO PADRES, which was founded in 1968. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for both its PADRES mark (e.g., Reg. No. 1,158,446 issued June 23, 1981) and the SAN DIEGO PADRES mark (e.g., Reg. No. 1,195,743 issued May 18, 1982).
Respondent, Private Whois Service c/o SDPadres.com, registered the disputed domain name on October 24, 2003. The disputed domain name resolves to a website featuring links to sites processing online transactions involving PADRES game tickets and other PADRES merchandise.
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 asserts rights in both its PADRES mark (e.g., Reg. No. 1,158,446 issued June 23, 1981) and the SAN DIEGO PADRES mark (e.g., Reg. No. 1,195,743 issued May 18, 1982) based on its multiple registrations of the marks with the USPTO. Prior panels have concluded that where a complainant possesses valid USPTO trademark registrations, the complainant has sufficiently established rights in the mark under Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). Prior panels have also determined that a complainant need not provide evidence that it registered its mark in the country where the respondent resides, so long as the complainant has established rights in some jurisdiction. 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 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). In accordance with the above cited precedent, the Panel finds that Complainant has sufficiently established rights in both its PADRES mark and its SAN DIEGO PADRES mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <sdpadres.com> domain name is confusingly similar to Complainant’s SAN DIEGO PADRES mark. The disputed domain name removes the spaces between the terms of the mark and abbreviates SAN DIEGO as “sd.” Additionally, the disputed domain name appends the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has not sufficiently altered Complainant’s mark in the disputed domain name so as to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); see also SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta; see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant has submitted a prima facie case in support of its contention that Respondent lacks rights and legitimate interests in the disputed domain name. Accordingly, the burden is now shifted to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding 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). Respondent’s failure to respond in these proceedings permits an inference that Respondent does in fact lack rights and legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel elects to examine the record in light of the Policy ¶ 4(c) factors to make a complete determination under this section of the Policy.
Policy ¶ 4(c)(ii) allows a Respondent to establish rights or legitimate interests in the disputed domain name if Respondent can establish that it is commonly known by the disputed domain name. Complainant has submitted WHOIS information for the <sdpadres.com> domain name indicating that the registrant is “Private Whois Service c/o SDPadres.com.” Although the WHOIS information contains the disputed domain name, there is no other evidence in the record that would allow the Panel to conclude that Respondent is commonly known by the disputed domain name. Therefore, the Panel cannot find rights or legitimate interests under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Gestmusic Endemol, S.A. v. operaciontriunfo.us, FA 214337 (Nat. Arb. Forum Jan. 14, 2004) (“Though Respondent’s WHOIS information lists Respondent’s name as ‘o. operaciontriunfo.us’ and organization as ‘operaciontriunfo.us,’ there is no evidence before the Panel that Respondent was actually commonly known by the [<operaciontriunfo.us>] domain name.”).
Complainant alleges that Respondent uses the <sdpadres.com> domain name to redirect Internet users to a website that features links to third-party sites offering tickets and merchandise in competition with similar offerings made by Complainant under its SAN DIEGO PADRES mark. The Panel finds that Respondent’s use of the disputed domain name to offer competing links, from which Respondent likely profits, is 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the disputed domain name to link Internet users to websites that offer both tickets to San Diego Padres’ baseball games and merchandise sold under the SAN DIEGO PADRES mark constitutes a disruption of Complainant’s business. The Panel concludes, therefore, that Respondent has demonstrated bad faith pursuant 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel also finds that Respondent’s registration and use of the confusingly similar <sdpadres.com> domain name was done in an attempt to commercially profit from click-through fees collected each time an Internet user selects one of the displayed links. The Panel concludes that Respondent’s incorporation of Complainant’s SAN DIEGO PADRES mark in the domain name, coupled with the links to tickets and merchandise similar to those sold by Complainant, likely creates confusion amongst Internet users regarding Complainant’s sponsorship or endorsement of the disputed domain name. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See 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).”); see also 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).
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 <sdpadres.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr,, Panelist
Dated: June 27, 2011
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