Dirk Nowitzki v. Happy Bulldawg Entertainment
Claim Number: FA1107001400861
Complainant is Dirk Nowitzki (“Complainant”), represented by Robert J. Ward of GARDERE WYNNE SEWELL, LLP, Texas, USA. Respondent is Happy Bulldawg Entertainment (“Respondent”), represented by Christian Dennie of Barlow Garsek & Simon, LLP, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dirkswish.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2011; the National Arbitration Forum received payment on July 28, 2011.
On July 30, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dirkswish.com> 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 August 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@dirkswish.com. Also on August 2, 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.
A timely Response was received and determined to be complete on August 23, 2011.
Complainant filed a timely Additional Submission on August 29, 2011, and Respondent also filed a timely Additional Submission on September 6, 2011. Both Complainant’s and Respondent’s Additional Submissions comply with Supplemental Rule 7.
On August 25, 2011, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Carol
Stoner, Esq., as Panelist.
Complainant requests that the domain name <dirkswish.com> be transferred from Respondent to Complainant.
A. Complainant alleges as follows:
Complainant alleges that Dirk Nowitzki is a professional basketball player who plays for the World Champion Dallas Mavericks of the National Basketball Association (NBA). He is commonly known and referred to in the basketball community as simply “DIRK.” He led the Dallas Mavericks to eleven consecutive NBA Playoffs (2000-01 to 2010-11) including an NBA Finals appearance in 2006 and the franchise’s first championship in 2011. He is a ten-time All-Star and eleven-time member of the All-NBA Teams.
While playing basketball, Dirk Nowitzki launched his charitable foundation “DIRK NOWITZKI STIFTUNG” (the German word “Stiftung translates in English as “foundation/establishment”) – which supports projects, initiatives and associations that enable children to participate in sports. Complainant has attached Exhibit B to its Complaint, which shows representative pages from the foundations website at http://www.dirk-nowitzki-stiftung.org.
Complainant argues that possession of a federal registered trademark is not required in order to prevail under the UDRP and that common law rights are sufficient. Trademarks rights can be acquired through such sufficient use, goodwill and reputation, that a party has created a sufficient association of the name with the party itself, so as to create a secondary meaning of the mark.
By virtue of Mr. Nowitzki’s considerable fame, substantial goodwill and favorable consumer recognition, as noted above, Nowitzki possesses extensive, significant and valuable rights in the name “DIRK” and “DIRK NOWITZKI.”
Complainant alleges that numerous panels have recognized that professional athletes have rights in their names, and that such rights are afforded protection under the Policy.
Complainant alleges that the domain name at issue <dirkswish.com> is identical or confusingly similar to trademarks in which Dirk Nowitzki has rights. The disputed domain name incorporates Complainant’s name “DIRK” and adds the descriptive term “SWISH,” a common term in basketball to describe the sound the net makes when a basketball is shot through the goal. Dirk Nowitzki is known informally as Swish 41, which also serves as his Twitter handle.
Complainant alleges that Respondent has no rights or legitimate interests in the domain name <dirkswish.com>.
Respondent has not been authorized to use Dirk Nowitzki’s name or likeness, and Respondent, itself has no trade or service mark rights in “DIRK” or <dirkswish.com>.
Respondent’s use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy 4 c; and Respondent’s use of the domain name is clearly commercial, and intentionally used to mislead and to divert internet users.
Complainant alleges that, based upon the content of its website, that Respondent was clearly aware of the fame and identity of Mr. Nowitzki. Respondent’s selection, use and registration of <dirkswish.com>, in light of its actual knowledge of the identity of Dirk Nowitzki, is interpreted as bad faith.
Complainant submits Exhibit I, constituting copies of the WHOIS records for Respondent’s domain names “247Cowboys.com,” “247Knicks.com,” and “247Mavs.com.” Complainant alleges that these domain names reference third party trademarks – all of which are professional sports teams. These registrations deprive multiple trademark owners from reflecting their marks in domain names. Respondent, then, has clearly engaged in a pattern of registering trademark related domain names in bad faith, which constitutes further evidence of registration and use of the disputed domain name in bad faith.
B. Respondent alleges as follows:
As a result of Dirk Nowitzki’s on-court achievements and Respondent’s admiration for his basketball skills, Respondent purchased the domain name <dirkswish.com> with a desire to develop a fan appreciation site. Prior to launching this site, Respondent and other individuals developed a logo for another business enterprise that is called the “Legendary Icon” which depicts a silhouetted basketball player, shooting a fade-away jump shot.
In late May 2011, the other entity began using the “Legendary Icon,” which developed a quick following among fans as the Dallas Mavericks were making a historic run to the NBA championship. During this time period, fans, friends and family prodded Respondent and others to make t-shirts displaying the Legendary Icon, which were worn to Maverick basketball contests and viewed on television
and around the arena. At the requests of the masses, Respondent placed the “Legendary Icon” t-shirt (and subsequently caps) on <dirkswish.com> for sale.
Respondent alleges that it did not anticipate being involved in the clothing business prior to June 2011, but much to its surprise found that there was a substantial demand for the “Legendary Icon” t-shirt. Prior to placing the t-shirts on sale on <dirkswish.com>, principals of Respondent conferred with Complainant’s “representatives” and each concluded Complainant was aware of the t-shirt and did not have a problem with Respondent moving forward with the sale of t-shirts and other items. Complainant even autographed a shirt for a principal of Respondent.
Respondent alleges that after selling the t-shirt for approximately two months, that it was served a cease and desist letter by Complainant’s counsel. On August 4, 2011, as a sign of good faith and without an admission of wrongdoing, Respondent removed all content from <dirkswish.com>. Respondent anticipates re-launching the website in the near future as a fan appreciation site, not containing any e-commerce.
Respondent contends that the disputed domain is not identical or confusingly similar to trademarks in which Complainant has rights. The term “swish” has been associated with basketball since prior to Complainant’s birth, and a plethora of NBA players have used and have been associated with the term “swish.” Complainant does not have a stronghold on such a generic term.
Respondent has First Amendment rights and legitimate interests in the domain at issue to provide information and historic data to the public.
Respondent alleges that the disputed domain is not being used in bad faith. Respondent did not purchase the disputed domain name to sell it for a profit or to keep it from Complainant, but anticipated that it would create a fan site, and will now do so. Respondent delayed in erecting the fan appreciation site due to this dispute and another matter between the parties to the dispute.
Respondent alleges that its ownership of multiple sport-related domains is an admission that Respondents are huge sports fans, rather than a per se showing of bad faith.
C. Complainant’s Additional Submissions
Complainant, in its Additional Submission, alleges as follows:
Dirk Nowitzki has rights in his personal name which Respondent does not contest. The combination of Dirk Nowitzki’s name with the descriptive term “swish” results in a domain name that is identical or confusingly similar to trademarks or service marks in which Complainant has rights. Complainant is a famous basketball player whose fame was well-established prior to Respondent’s registration of the domain name in issue.
Complainant’s name has clearly acquired secondary meaning in the mind of the American public. The term “swish” further identifies Complainant or is a term that is closely associated with Complainant’s sport. Complainant is known by the designation “Swish41” and has over 280,000 followers of his “@Swish41” Twitter account. As previous panels have recognized, domain names that incorporate a Complainant’s name or mark with the addition of common words having an obvious relationship to the Complainant are confusingly similar in satisfaction of Policy ¶4.
Respondent alleges, without the provision of any dates, times, places, names or any evidence, whatsoever, that Respondent conferred with Complainant’s representatives regarding-not the use of Complainant’s name in the domain name at issue-but rather the sale of the “Legendary Icon” t-shirts. At no time has Complainant ever authorized Respondent – Happy Bulldawg Entertainment – or any of its principals- to use Complainant’s name or likeness on, or in connection with, memorabilia such as the “Legendary Icon” t-shirt. Respondent’s obtaining Complainant’s autograph on one of its shirts does not prove consent, and in no way relates to the domain name at issue.
<Dirkswish.com> is a commercial website, not a fan site, and has always been commercial. The sole purpose of Respondent’s website is the commercial exploitation of merchandise bearing the likeness of Dirk Nowitzki. Such conduct does not constitute rights or legitimate interests under the Policy.
Respondent registered and used, and is continuing to use, the domain name <dirkswish.com> in bad faith. Respondent’s website singularly focused on selling infringing products such as men and women’s shirts, caps and other accessories, such as backpacks.
Respondent’s stated intention in his Response to re-launch the site in the near future as a fan appreciation site without any e-commerce is without evidence of any demonstrable preparation by Respondent, prior to receiving notice of the dispute, to use the domain name at issue in connection with a bona fide offering of goods/services.
Despite its representation to Panel, Respondent continues to use the domain name at issue to exploit Complainant and is continuing to direct users to <dirkswish.com> in order to sell its products. For example, per Complainant’s Exhibit D, Respondent has purchased advertisements in connection with its YouTube videos to direct consumers to <dirkswish.com> in order to increase product sales.
Respondents’ own statements in interview, as evidenced by Complainant’s Exhibit C, explain how he came up with the Legendary Icon in May 2011 (the <dirkswish.com> domain name was registered May 28, 2011) and then immediately began selling t-shirts and other memorabilia on <dirkswish.com>. Respondent stated in interview that he could not find a single picture on the Internet that captured the essence of Dirk’s Legendary move, and so, with the help of a friend, tweaked the logo in Photoshop and “went through iteration after iteration until we nailed it. The result is the Legendary Icon, which was later featured on the cover of Sports Illustrated.”
Respondent stated in this interview that “We put up a fan site with e-commerce functionality in less than a day at www.dirkswish.com right before the start of the game in Miami. In less than 30 minutes, after a mention on The Ticket 1310am, we had 130 orders.”
Respondent then further built upon this initial success by capitalizing on media exposure. Attached as Complainant’s Exhibit D are screenshots of examples of some of the advertisements Respondent has launched to direct consumers to purchase merchandise at <dirkswish.com.>
D. Respondent’s Additional Submission
Respondent, in its Additional Submission, alleges as follows:
Respondent argues that this UDRP proceeding concerns <dirkswish.com>, and not the Legendary Icon.
Respondent states that Complainant, in its cited cases of confusing similarity, showed no evidence as to, whether or not, the Complainant authorized or consented to Respondent’s use of Complainant’s name. Whereas, in Respondent’s case, at least two individuals (Mark Cuban and Brian Dameris) made comments in person, via email, or via text message, that indicated or suggested to Respondent’s principals, that Complainant had no objections to their use of his name.
Respondent alleges that Complainant has failed to clearly establish that Respondent lacks any right or legitimate interest in <dirkswish.com> as “at least one other panel has noted the following:
the users of the internet do not expect all sites bearing the name of celebrities or famous historical figures or politicians, to be authorized or in some way connected with the figures themselves. The internet is an instrument for purveying information, comment and opinion on a wide range of issues and topics. It is a valuable source of information in many fields, and any attempt to curtail its use should be strongly discouraged. Users fully expect domain names incorporating the names of well-known figures in any walk of life to exist independently of any connection with the figure themselves, but having been placed there by admirers or critics as the case may be.”
See Springsteen v. Burgar, D2000-1532 (WIPO July 2, 2001), Complaint denied.
As admirers of Dirk Nowitzki, Respondent’s principals intended (and still do intend) to develop a fan site on <dirkswish.com> similar to the ones that its principals have developed on other basketball fan sites, including <streetball.com.> The approximately two month delay in putting up the fan site was not intentional and hardly a basis for establishing Respondent’s bad faith in using the name.
(1) The domain name <dirkswish.com> 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.
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."
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 does not cite evidence of federal trademark registrations for its DIRK or DIRK NOWITZKI marks, but, in lieu thereof, has presented evidence of common law rights in the aforementioned marks. The Panel finds that Complainant need not own a valid trademark registration under Policy ¶ 4(a)(i) in order to establish rights in its marks. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant, Dirk Nowitzki, asserts that he is a professional basketball player who plays for the Dallas Mavericks in the National Basketball Association (“NBA”). Complainant submits that he is commonly referred to in the basketball community as “DIRK,” and that he is the only player in the NBA with that name.
Complainant alleges that he has led the Dallas Mavericks to eleven consecutive NBA playoffs beginning in the year 2000, including an NBA Finals appearance in 2006, and the NBA Championship in 2011, where he was the Finals Most Valuable Player. Complainant argues that he is a ten-time All-Star, eleven-time member of All-NBA teams, and is the first European-born player in NBA history to receive the NBA Most Valuable Player award.
Complainant further contends that he has launched the Dirk Nowitzki Stiftung (“stiftung” is a German word which translates into English as “foundation” or “establishment”) which supports projects that enable children to engage in healthy activities through sports. Complainant argues that through its NBA fame and humanitarian foundation, he has acquired secondary meaning in his first name, DIRK, as well as in his full name, DIRK NOWITZKI. Complainant supports such an argument by alleging that upon typing in the term “Dirk” in a search engine, the vast majority of returns are in reference to this mark. Complainant also references that DIRK NOWITZKI has over a quarter of a million followers on Twitter. Therefore, Complainant contends that its DIRK mark has developed “significant secondary meaning within the American sports, entertainment and public service communities throughout the United States and the world and constitutes a valid common law trademark.”
The Panel concludes that Complainant has developed common law rights in his personal name under Policy ¶ 4(a)(i) through such usage as evidenced above throughout his NBA career. See Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (holding that the complainant had accrued common law rights in the KEVIN GARNETT mark); see also Ballesteros v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the complainant had common-law rights in his name and that the respondent’s <seveballesterostrophy.com> domain name was confusingly similar to the mark).
Complainant contends that the <dirkswish.com> domain name incorporates its DIRK mark while adding the term “swish” which is a generic reference to the sound a basketball net makes when the ball travels through the hoop. Further, Complainant argues that adding the generic top-level domain (“gTLD”) “.com” is insignificant in a Policy ¶ 4(a)(i) analysis. The Panel finds that the <dirkswish.com> domain name is confusingly similar to Complainant’s DIRK mark under Policy ¶ 4(a)(i), where the domain name combines Complainant’s mark with the descriptive term “swish” and the gTLD “.com.” See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s<amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); 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.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that “Respondent is not affiliated with Dirk Nowitzki, has not been authorized to use Dirk Nowitzki’s name, likeness and trademark, and Respondent – Happy Bulldawg Entertainment- has no trade or service mark rights in ‘DIRK’ or ‘DIRKSWISH.COM.’” Complainant contends that since the WHOIS information identifies the disputed domain name registrant as “Happy Bulldawg Entertainment” that it is not commonly known by the <dirkswish.com> domain name. The Panel notes that prior UDRP decisions, such as those in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), have ruled that, based upon the WHOIS information, and upon Complainant’s arguments that it has not authorized the Respondent to use its mark, that the respective Respondents were not commonly known by the disputed domain names. The Panel is in accord with such precedent, and thus rules that Respondent in the instant proceeding is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant evidences, in its Exhibit H screen-shot, that Respondent is using the disputed domain name to sell goods, such as shirts, hats, and backpacks, which bear a logo of Complainant taking a basketball shot. This resolving website states that “Dirk Nowitzki is Legendary Icon Status” and that other great basketball players all have recognizable logos, while Dirk does not, and requests viewers to “Help us turn Dirk Nowitzki into a Legendary Icon. Check out our Legendary Icon T-Shirts at DirkSwish.com.”
Complainant has made a prima facie case that Dirk’s logo and likeness were used without Complainant’s consent. The Panel thus finds that Respondent’s commercial use of the disputed domain name containing Complainant’s mark to market and sell products featuring an unauthorized logo meant to emulate
Complainant 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 Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Complainant has persuasively argued that “Respondent was on notice as to the identity of Mr. Nowitzki when it registered <dirkswish.com> on May 28, 2011.” While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. Here, the Panel has been persuaded by Complainant’s Additional Submission (See Exhibit C, Interview with Respondent’s Principal, Ryan Mendez) wherein Mendez states that the developed logo of Nowitzki was shown to a few people who loved it, at the Byron Nelson Golf tournament held in Dallas on May 26-29, 2011. Mr. Mendez and his partner needed a site to commercialize the product and did in fact register Complainant’s well known mark as a domain name on May 28, 2011. Here, the divulged facts clearly indicate that Respondent had actual knowledge of Complainant’s well known mark, prior to registration of the disputed domain name <dirkswish.com.> and thus acted in bad faith when it registered the domain name. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant contends that Respondent has engaged in a bad faith pattern of registering domain names that contain others’ trademarks. Complainant submits, in its Exhibit G, WHOIS information which shows that Respondent has also registered the following domain names: <247Cowboys.com>, <247Knicks.com>, and <247Mavs.com> among others. Complainant credibly argued that such registrations of domain names that clearly contain the trademarks of others indicates that Respondent has engaged in a bad faith pattern of abusive domain name registrations. Respondent’s retort that “the principals of Respondent are huge sport fans and love to report on and appreciate their favorite sports teams” is not so subtle subterfuge. The Panel finds that Respondent’s other domain name registrations which contain the trademarks of third-parties, is evidence that Respondent has engaged in a pattern of bad faith under Policy ¶ 4(b)(ii). See 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 argues that when Internet users seek to find information regarding DIRK NOWITZKI and find Respondent’s website in the returned search, that the consumer is brought to a website that is not only not controlled by Complainant, but is also selling goods in competition with Complainant’s offerings.
Respondent, in its Response, admits that the Legendary Icon t-shirt attracted substantial attention from local fans and the media. “At the request of the masses, Respondent placed the Legendary Icon t-shirt (and subsequently caps) on <dirkswish.com> for sale.” Respondent seeks, in its Additional Submission, to acquit itself of any wrongdoing, by alleging the existence of a factual dispute regarding authorization to sell the emblazoned merchandise through the <dirkswish.com> website.
However, this Panel rules that, as Complainant has met its prima facie burden to establish that Respondent lacks rights in the mark, that the burden has shifted to Respondent to prove its rights in the mark. Here, Respondent has not met its corresponding burden of proof, through its recitation of vague allegations that two
named individuals “made comments in person, via email, or via text message that indicated or suggested to Respondent’s principals that Complainant had no objections to their use of his name.”
Rather, such use remains unauthorized, and is at the expense of Mr. Nowitzki, his name and substantial goodwill, and constitutes disruption and evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel thus finds that Respondent has registered, and is using, the domain name in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
The Panel further finds that Respondent’s registration and use of the disputed domain name falls under the parameters of Policy ¶ 4(b)(iv), which allows a finding of bad faith where:
by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.
In the instant case, the Panel finds that Respondent’s use of the domain name to sell t-shirts, backpacks, and hats that contain a logo containing the likeness of Complainant falls squarely within Policy ¶ 4(b)(iv) and constitutes bad faith usage of <dirkswish.com>. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dirkswish.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: September 08, 2011
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