Wilson Sporting Goods Co. v. Smith Davilv
Claim Number: FA1106001393375
Complainant is Wilson Sporting Goods Co. (“Complainant”), represented by Terence P. O'Brien of Wilson Sporting Goods Co., Illinois, USA. Respondent is Smith Davilv (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wilsonracquets.org>, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2011; the National Arbitration Forum received payment on June 14, 2011.
On June 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wilsonracquets.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 June 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@wilsonracquets.org. Also on June 16, 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 July 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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, 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 <wilsonracquets.org> domain name is confusingly similar to Complainant’s WILSON mark.
2. Respondent does not have any rights or legitimate interests in the <wilsonracquets.org> domain name.
3. Respondent registered and used the <wilsonracquets.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wilson Sporting Goods Co., owns the WILSON mark. Complainant has multiple registrations for the WILSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 788,107 registered April 13, 1965). Complainant uses its mark in connection with its international sporting goods sales, notably tennis racquets.
Respondent, Smith Davilv, registered the <wilsonracquets.org> domain name on May 30, 2011. The domain name resolves to a website which sells the same type of products as Complainant sells (tennis racquets). Many of the racquets sold are Complainant’s Wilson racquets.
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 federal trademark registrations with the USTPO for its WILSON mark (e.g., Reg. No. 788,107 issued April 13, 1965). Panels have found that that registration with a federal trademark authority, even when in a country other than where the respondent resides, is sufficient to provide the complainant with rights in the mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); 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). Given the information which Complainant has provided the Panel, the Panel finds that Complainant has rights in the WILSON mark.
Complainant contends that the <wilsonracquets.org> domain name is confusingly similar to its WILSON mark. The addition of a generic top-level domain (“gTLD”) does not distinguish the domain name from the complainant’s mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Furthermore, the addition of a term which describes a complainant’s business is not substantial enough to differentiate the domain name from a mark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)). The changes Respondent made to Complainant’s mark in the disputed domain name are as follows: the addition of the gTLD “.org” and the addition of the descriptive term “racquets.” Without more, the Panel must find that the disputed domain name is confusingly similar to Complainant’s WILSON mark.
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain name. Once a complainant has made a prima facie case in support of its assertions, the burden shifts to the respondent to prove that it does have rights or legitimate interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c))l; see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Respondent, having failed to respond to the Complaint, has given the Panel the right to assume that Respondent has no rights or legitimate interests. See 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). The Panel finds that Complainant has made a prima facie case. The Panel will review the record to determine if Respondent has rights or legitimate interests in the disputed domain name.
Being commonly known by a disputed domain name may provide a respondent with the rights or legitimate interests necessary to withstand a Policy ¶ 4(c)(ii) analysis. The information on record, including the WHOIS information for the disputed domain name, provides the Panel with information to base its Policy ¶ 4(c)(ii) review on. See 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The WHOIS information for the disputed domain name does not provide the Panel with evidence that Respondent is commonly known by the domain name. Complainant has not authorized Respondent to use its WILSON mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the disputed domain name is evidence of its lack of rights and legitimate interests in it. Panels have found in the past that the use of a disputed domain name to sell a complainant’s products and the products of a complainant’s competitors demonstrated the respondent’s failure to use the domain name in a way which garners it rights or legitimate interests. See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Respondent’s <wilsonracquets.org> domain name resolves to a page which sells tennis racquets, some of which are Complainant’s. The Panel thus finds that the disputed domain name’s use is demonstrative of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant contends that Respondent, having registered and used the disputed domain name in the aforementioned manner, has disrupted Complainant’s business. Prior panels have held that the use of a domain name to divert Internet users to a complainant’s competitor’s website is evidence of bad faith. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field). Respondent sells, through its <wilsonracquets.org> domain name, some merchandise that is identical to Complainant’s products. By using a confusingly similar domain name, Respondent has ensured that some of the Internet traffic trying to find Complainant’s website will instead be directed to Respondent’s website. Therefore, Complainant will lose part of its consumer base because Respondent is selling identical and similar merchandise which Internet users can buy without rerouting to Complainant’s site. The Panel finds that Respondent has disrupted Complainant’s business pursuant to Policy 4(b)(iii).
Complainant contends that Respondent has intentionally attempted to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion as to the affiliation of the disputed domain name and Complainant’s mark. Panels have found that the registration and use of a disputed domain name to sell Complainant’s products without authorization is evidence of bad faith. See Nintendo of Am., Inc. v. Pokemonplanet.net, D2001-1020 (WIPO Sept. 25, 2001) (“By using the [<pokemonplanet.net>] Domain Names [sic] to sell Complainant’s [POKEMON] products, Respondents have shown bad faith in use of the Domain Name.”); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”). Respondent uses the disputed domain name to sell products that Complainant and Complainant’s competitors sell. Because the products being sold are identical to those sold by Complainant, the registration and use of the confusingly similar <wilsonracquets.org> domain name encourages confusion as to affiliation of Respondent’s domain name and Complainant’s mark. The Panel finds that Respondent’s registration and use was done in bad faith as evident by the attraction for commercial gain under Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <wilsonracquets.org> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: July 21, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page