Reebok International Limited v. NA
Claim Number: FA0301000140621
PARTIES
Complainant is Reebok International Limited, Lancaster, United Kingdom (“Complainant”) represented by Brian M. Davis, of Alston & Bird, LLP. Respondent is NA, Jerusalem, Israel (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reeboktennis.net>, registered with Dotster, 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.
James A, Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 8, 2003; the Forum received a hard copy of the Complaint on January 9, 2003.
On December 16, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the domain name <reeboktennis.net> is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 4, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@reeboktennis.net by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A, Crary as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <reeboktennis.net> domain name is confusingly similar to Complainant’s REEBOK mark.
2. Respondent does not have any rights or legitimate interests in the <reeboktennis.net> domain name.
3. Respondent registered and used the <reeboktennis.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant
sells various articles of footwear and apparel, including tennis footwear and
apparel. Complainant has sold these items in the United States and
internationally under the trademark REEBOK since at least 1965. Complainant
holds numerous marks for REEBOK registered with the United States Patent and
Trademark Office (“USPTO”), including Reg. No. 1,133,740, issued April 22,
1980, for “shoes for use in athletic sports.”
Complainant
has spent tens of millions of dollars annually advertising and promoting its
goods under the REEBOK mark. Complainant operates a website at <reebok.com>
to market and promote these goods.
Respondent
registered the <reeboktennis.net> domain name on May 9, 2002.
Respondent is using the disputed domain name to redirect Internet users to a
website entitled “Boycott Reebok Tennis Website.” This website claims that the
<reeboktennis.com> website is racist and requests that users send “any
info you have about the Reebok being mother fucking racist” to a specified
e-mail address, reeboksucksdonkey@hotmail.com.
<reeboktennis.net> and <reeboktennis.com> were registered
on the same day from the same registrar by a registrant identified only as
“NA”.
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.
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
has established rights in the REEBOK mark through registration with the USPTO
and continuous use since 1965.
Respondent’s <reeboktennis.net>
domain name is confusingly similar to Complainant’s REEBOK mark because the
domain name incorporates Complainant’s entire mark and merely adds a generic
term that is obviously related to Complainant’s business. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Arthur Guinness Son &
Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the Complainant combined with a
generic word or term).
This Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).
Furthermore, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the disputed domain name. If Complainant asserts a prima facie case against Respondent, then the burden of proof shifts to Respondent to show it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
In its Complaint, Complainant alleges Respondent has no rights or legitimate interests in the <reeboktennis.net> domain name. This allegation is assumed to be true because Respondent has failed to come forward and contest Complainant’s allegations. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Respondent uses the <reeboktennis.net> domain name to instruct
Internet users to “boycott Reebok tennis.” The website also includes
advertisements for third-party service providers. This type of use is neither a
use in connection with a bona fide offering of goods pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum
Mar. 9, 2000) (finding no legitimate use when Respondent was diverting
consumers to its own website by using Complainant’s trademarks); see also AltaVista v. Krotov,
D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct
users to other, unconnected websites does not constitute a legitimate interest
in the domain name).
Respondent
has failed to come forward with any proof and there is no evidence on record to
establish that Respondent is commonly known as REEBOKTENNIS or <reeboktennis.net>.
Thus, Respondent has failed to establish that it has rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
This Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
By capitalizing on Complainant’s
mark, Respondent is using the disputed domain name to divert Internet users to
its website, which contains advertisements for third-party service providers.
The Panel infers that Respondent is making a profit from the Internet traffic
that is diverted to the website. Therefore, Respondent is using a confusingly
similar domain name to create Internet-user confusion for its own commercial
benefit, which is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum
Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
This Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <reeboktennis.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: February 27, 2003
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