Arvest Bank Group, Inc. v. John Cummings
Claim Number: FA1108001405387
Complainant is Arvest Bank Group, Inc (“Complainant”), represented by Ryan L. Lobato of McAfee & Taft, A Professional Corporation, Oklahoma, USA. Respondent is John Cummings (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arvestballpark.com>, 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2011; the National Arbitration Forum received payment on August 30, 2011.
On August 31, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <arvestballpark.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 September 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@arvestballpark.com. Also on September 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
a. The domain name(s) is(are) identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (UDRP ¶4(a)(1))
Complainant, Arvest Bank Group, Inc. (“Arvest”) has registered the ARVEST mark with the USPTO. Arvest owns the naming rights to a baseball stadium in Springdale, Arkansas. Construction on the Arvest Ballpark began in July of 2007. Arvest Ballpark was named the baseballparks.com Stadium of the Year in 2008.
Where a complainant has registered a mark with a federal trademark authority, panels have determined that the complainant has established rights in the mark under Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to UDRP ¶4(a)(i)); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Due to the use of identical literal elements, Respondent’s <arvestballpark.com> domain name includes Arvest’s federally registered ARVEST® mark without authorization or excuse. Moreover, Respondent's <arvestballpark.com> domain name is confusingly similar to the literal elements of Arvest's common law trademark ARVEST BALLPARK™ for various goods and services and is identical to the name of Arvest’s ballpark, ARVEST BALLPARK™.
b. The Respondent has no rights or legitimate interests in respect of the domain name; (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
Respondent's domain name consists solely of the name of Complainant's ARVEST BALLPARK™ mark. Respondent does not do business at the <arvestballpark.com> domain name, nor does Respondent otherwise do business under the name ARVEST BALLPARK. Respondent is not and has never been authorized by Arvest to use Arvest's ARVEST BALLPARK™ mark. Respondent does not have any reasonable justification for registering a domain name consisting exclusively of the name of the Arvest ballpark. Consequently, Respondent has no rights or legitimate interests in respect of the domain name.
Additionally, prior to Arvest sending Respondent a cease and desist letter, the webpage at <arvestballpark.com> showed an image of a scantily clad woman and an offer to the general public to sell the domain for $8,888. Such offers to sell a domain name for an amount obviously in excess of Respondent’s out-of-pocket costs indicates that Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
c. The domain name(s) was/were registered and is/are being used in bad faith. (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Respondent registered and used the domain name <arvestballpark.com> in bad faith. Respondent is a resident of Bella Vista, Arkansas, a town located 26 miles north of the Arvest Ballpark. Respondent registered the <arvestballpark.com> domain name on September 5, 2007, two months after the initial construction of the Arvest Ballpark began. As a local resident, Respondent was clearly aware of the construction of Arvest Ballpark prior to registration.
As stated above, prior to Arvest sending a cease and desist letter, the webpage at <arvestballpark.com> showed an image of a scantily clad woman and an offer to the general public to sell the domain for $8,888. First, linking to inappropriate images is evidence of bad faith. See Britannia Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001); Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, D2004-0206 (WIPO April 30, 2004). Second, such offers to sell a domain name for an amount obviously in excess of Respondent’s out-of-pocket costs provide an independent basis for evidencing bad faith registration and use. See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶4(b)(i)); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶4(b)(i).”).
After Respondent received a cease and desist letter from Complainant, Respondent changed the domain name to redirect to Arvest's domain <arvest.com>. Respondent does not now nor has he ever used the domain name for a bona fide offering of goods.
B. Respondent failed to submit a Response in this proceeding.
Complainant Arvest Bank Group, Inc. owns the naming rights to a baseball stadium in Springdale, Arkansas and has used its ARVEST mark to name it ARVEST Ballpark. Complainant owns two trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ARVEST mark:
Reg. No. 1,731,952 registered November 10, 1992
Reg. No. 2,616,281 registered September 10, 2002
Respondent John Cummings registered the <arvestballpark.com> domain name on September 5, 2007. The disputed domain name resolves to a website featuring a scantily clad female baseball player and the offer to sell the disputed domain name for $8,888.88.
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 Complainant to 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 contends it has rights in its ARVEST mark as required by Policy ¶4(a)(i). Complainant presents evidence of its trademark registrations with the USPTO for its ARVEST mark:
Reg. No. 1,731,952 registered November 10, 1992
Reg. No. 2,616,281 registered September 10, 2002
The Panel finds these registrations are sufficient to prove Complainant has rights in its ARVEST mark for the purposes of Policy ¶4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)).
Complainant claims Respondent’s <arvestballpark.com> domain name is confusingly similar to Complainant’s ARVEST mark. In the disputed domain name, Respondent combines Complainant’s ARVEST mark with the descriptive term “ballpark” and the generic top-level domain (“gTLD”) “.com.” The Panel determines the additions of the descriptive term and the gTLD fail to adequately distinguish the disputed domain name and render the <arvestballpark.com> domain name confusingly similar to Complainant’s ARVEST mark under Policy ¶4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant claims Respondent lacks rights and legitimate interests in the <arvestballpark.com> domain name. Previous panels have found when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove it has rights or legitimate interests pursuant to Policy ¶4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the <arvestballpark.com> domain name. Out of an abundance of caution, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶4(c). 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); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant claims Respondent does not do business under the <arvestballpark.com> domain name and has never been authorized to use Complainant’s ARVEST mark. The WHOIS information lists “John Cummings” as the registrant of the <arvestballpark.com> domain name, which the Panel finds is not similar to the disputed domain name. Based on the WHOIS information and the other evidence in the record, the Panel holds Respondent is not commonly known by the <arvestballpark.com> domain name pursuant to Policy ¶4(a)(i). 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <arvestballpark.com> domain name resolves to a website that contains pictures relating to baseball players: one picture is of a scantily clad female softball player and the other picture is of the mascot and a player for the Yomiuri Giants (not to be confused with the San Francisco Giants). Respondent also offers to sell the disputed domain name for $8,888.88 on the website. The Panel finds this offer to sell the disputed domain name, for an amount exceeding the presumed out-of-pocket costs, is neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use of the <arvestballpark.com> domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent openly offered to sell the disputed domain name for $8,888.88 on the website resolving from the <arvestballpark.com> domain name. Complainant alleges, and the Panel presumes, this amount is in excess of Respondent’s out-of-pocket costs. The Panel concludes Respondent registered and uses the <arvestballpark.com> domain name in violation of Policy ¶4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Complainant also contends Respondent likely had actual knowledge of Complainant and its rights in the ARVEST mark. Complainant argues Respondent is listed as residing in Bella Vista, Arkansas, which is located 26 miles from Complainant’s ARVEST Ballpark. Due to Respondent’s listed residence, the Panel finds Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii) because Respondent had actual notice of Complainant’s trademark rights. 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).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <arvestballpark.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: October 3, 2011
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