Wilson Sporting Goods Co., ATEC Division v. Jim Hibbs / Instant Baseball / [Registrant]
Claim Number: FA1111001416588
Complainant is Wilson Sporting Goods Co., ATEC Division (“Complainant”), represented by Jeffery A. Key of Key & Associates, Illinois, USA. Respondent is Jim Hibbs / Instant Baseball / [Registrant] (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <atecsports.net>, <atecsports.biz>, <atecsports.org>, <atecsports.ws>, <atecsports.info>, <armmachine.info>, <atec3g.com>, <atec3gpitchingmachine.com>, <atecarm.com>, <atecarm.info>, <atecarmmachine.com>, <atecarmmachine.info>, <atecbackstops.com>, <atecballs.com>, <atecbaseball.com>, <atecbaseballparts.com>, <atecbattingcages.biz>, <atecbattingcages.com>, <atecbattingcages.org>, <ateccages.biz>, <ateccages.com>, <ateccages.info>, <ateccages.net>, <atecfeeders.com>, <atecdealer.com>, <atecdealer.net>, <atecdistributor.com>, <atecequipment.com>, <atecmachines.com>, <atecparts.com>, <atecpitchingmachine.com>, <atecpitchingmachines.net>, <atecpitchingmachines.org>, <atecpowerstreak.com>, <atecradius.com>, <atecrookie.com>, <atecsales.com>, <atecsales.info>, <atecsales.net>, <atecsalesdealer.biz>, <atecsalesdealer.com>, <atecsalesdealer.info>, <atecsalesdealer.net>, <atecscreens.com>, <atecsoftball.com>, <atecsoftballparts.com>, <atecwheels.com>, <caseypro3g.com>, <caseypro3gpitchingmachine.com>, <caseyprodealer.com>, <caseypropitchingmachine.com>, <ateccaseypro.com>, <ateccaseypropitchingmachines.com>, <ateccaseypro3g.com>, <ateccaseypro3gpitchingmachine.com>, <atecjet.com>, <atecjetpitchingmachine.com>, and <jetpitchingmachine.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2011; the National Arbitration Forum received payment on November 21, 2011.
On November 23, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <atecsports.net>, <atecsports.biz>, <atecsports.org>, <atecsports.ws>, <atecsports.info>, <armmachine.info>, <atec3g.com>, <atec3gpitchingmachine.com>, <atecarm.com>, <atecarm.info>, <atecarmmachine.com>, <atecarmmachine.info>, <atecbackstops.com>, <atecballs.com>, <atecbaseball.com>, <atecbaseballparts.com>, <atecbattingcages.biz>, <atecbattingcages.com>, <atecbattingcages.org>, <ateccages.biz>, <ateccages.com>, <ateccages.info>, <ateccages.net>, <atecfeeders.com>, <atecdealer.com>, <atecdealer.net>, <atecdistributor.com>, <atecequipment.com>, <atecmachines.com>, <atecparts.com>, <atecpitchingmachine.com>, <atecpitchingmachines.net>, <atecpitchingmachines.org>, <atecpowerstreak.com>, <atecradius.com>, <atecrookie.com>, <atecsales.com>, <atecsales.info>, <atecsales.net>, <atecsalesdealer.biz>, <atecsalesdealer.com>, <atecsalesdealer.info>, <atecsalesdealer.net>, <atecscreens.com>, <atecsoftball.com>, <atecsoftballparts.com>, <atecwheels.com>, <caseypro3g.com>, <caseypro3gpitchingmachine.com>, <caseyprodealer.com>, <caseypropitchingmachine.com>, <ateccaseypro.com>, <ateccaseypropitchingmachines.com>, <ateccaseypro3g.com>, <ateccaseypro3gpitchingmachine.com>, <atecjet.com>, <atecjetpitchingmachine.com>, and <jetpitchingmachine.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 December 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@atecsports.net, postmaster@atecsports.biz, postmaster@atecsports.org, postmaster@atecsports.ws, postmaster@atecsports.info, postmaster@armmachine.info, postmaster@atec3g.com, postmaster@atec3gpitchingmachine.com, postmaster@atecarm.com, postmaster@atecarm.info, postmaster@atecarmmachine.com, postmaster@atecarmmachine.info, postmaster@atecbackstops.com, postmaster@atecballs.com, postmaster@atecbaseball.com, postmaster@atecbaseballparts.com, postmaster@atecbattingcages.biz, postmaster@atecbattingcages.com, postmaster@atecbattingcages.org, postmaster@ateccages.biz, postmaster@ateccages.com, postmaster@ateccages.info, postmaster@ateccages.net, postmaster@atecfeeders.com, postmaster@atecdealer.com, postmaster@atecdealer.net, postmaster@atecdistributor.com, postmaster@atecequipment.com, postmaster@atecmachines.com, postmaster@atecparts.com, postmaster@atecpitchingmachine.com, postmaster@atecpitchingmachines.net, postmaster@atecpitchingmachines.org, postmaster@atecpowerstreak.com, postmaster@atecradius.com, postmaster@atecrookie.com, postmaster@atecsales.com, postmaster@atecsales.info, postmaster@atecsales.net, postmaster@atecsalesdealer.biz, postmaster@atecsalesdealer.com, postmaster@atecsalesdealer.info, postmaster@atecsalesdealer.net, postmaster@atecscreens.com, postmaster@atecsoftball.com, postmaster@atecsoftballparts.com, postmaster@atecwheels.com, postmaster@caseypro3g.com, postmaster@caseypro3gpitchingmachine.com, postmaster@caseyprodealer.com, postmaster@caseypropitchingmachine.com, postmaster@ateccaseypro.com, postmaster@ateccaseypropitchingmachines.com, postmaster@ateccaseypro3g.com, postmaster@ateccaseypro3gpitchingmachine.com, postmaster@atecjet.com, postmaster@atecjetpitchingmachine.com, and postmaster@jetpitchingmachine.com. Also on December 8, 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 December 15, 2011.
Complainant submitted an Additional Submission on December 20, 2011, that was deemed to be in compliance with Supplemental Rule 7.
Respondent submitted an Additional Submission on December 21, 2011, that was deemed to be in compliance with Supplemental Rule 7.
On December 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Wilson Sporting Goods Co., ATEC Division, produces baseball and softball equipment, pitching machines, nets, ball tees, ball baskets, bat bags, protective screens, batting cages, and other sporting goods equipment under the following trademark registrations that it owns with the United States Patent and Trademark Office ("USPTO"):
Mark Reg. No. Filing Date Reg. Date
ATEC 1,902,873 June 13, 1994 July 4, 1995
CASEY 2,932,994 January 13, 2004 March 15, 2005
ROOKIE 2,436,104 January 30, 1998 March 20, 2001
JET 3,041,396 November 23, 2004 January 10, 2006
Complainant contends that all fifty-eight domain names at dispute are confusingly similar to its registered trademarks.
Complainant has not authorized any person named “Jim Hibbs” or any business named Instant Baseball to use Complainant trademarks in his domain names.
Further, the remaining portion of the domain names at dispute include descriptive terms referring to the very goods covered by Complainant’s registrations, and describe Complainant’s actual products, including: “pitching machine”, “cages”, “Power Streak”, “Jet”, “Arm”, “Arm machine”, “baseball, “softball”, “rookie”, “Casey Pro 3G” and “3G”, and are the same goods covered by Complainant’s trademark registrations. In addition, “pitching machine”, “cages”, “Power Streak”, “Jet”, “Arm”, “Arm machine”, “Rookie”, “Casey”, “Casey Pro 3G” and “3G”, are the actual goods that Complainant designs, manufactures, and sells.
Still further, the goods sold by Respondent through the disputed domain names, all of which redirect the user to “INSTANTBASEBALL.COM” (which is also owned by Respondent Jim Hibbs), are identical in appearance to the goods designed, manufactured, and sold by Complainant. In other words, not one of the domain names are for a legitimate website.
Complainant, ATEC, a division of Wilson Sporting Goods Co., is well-known for making baseball and softball equipment, tossing machines, ball pitching machines, batting cages, pitching arm devices, and other related equipment of the highest quality and is an industry leader in such equipment. Through over twenty years of continuous use, Complainant has acquired significant strength in its mark, ATEC, in association with high quality baseball pitching machines, cages and related equipment for use in baseball and softball. Moreover, ATEC is the current, exclusive licensee of Major League Baseball for use of the MLB Logo on ball pitching machines. ATEC and Wilson Sporting Goods Co. just recently learned of Hibbs ownership of the subject domain names.
Complainant contends that Respondent has no rights or legitimate interests with respect to the 58 Disputed Domain names.
Complainant further contends that no license, express or implied, has ever been granted, for any purpose, to Respondent “Jim Hibbs” or his operating company “Instant Baseball,” for using any of Complainant’s valuable and distinctive trademarks in Respondent’s Disputed Domain names.
The Respondent is not an authorized dealer of genuine Atec branded equipment.
Respondent’s use of the Disputed Domains is strictly commercial, and deceptive, and is not a fair use of the domain names.
Furthermore, Respondent has expressed his explicit intent as a cybersquatter by asserting that he has registered all of the disputed domains related to Complainant’s distinctive and valuable trademarks because Complainant failed to do so quickly enough.
Respondent has demanded tens of thousands of dollars from Complainant for release of the Disputed Domains.
Further Respondent has threatened to sell the rights to the Disputed Domains containing Complainant’s trademarks to the highest bidder anywhere in the world; and has characterized Complainant as a “deep pocketed” target for his cybersquatting scheme.
Respondent’s Disputed Domains tarnish and harm Complainant’s valuable and
distinctive trademarks. Respondent is diverting sales and Complainant’s consumers to Respondent’s infringing websites to the detriment of Complainant and its authorized distributors and sellers.
Complainant contends that Respondent has registered and is using the 58 dispute Domain Names in bad faith.
Respondent has acted in bad faith by explicitly stating that the reason he registered the Disputed Domains is to sell them to Complainant for tens of thousands of dollars, or to sell them to the highest bidder anywhere in the world if Complainant fails to accede.
Respondent has also acted in bad faith by explicitly stating that he registered the Disputed Domains, containing Complainant’s distinctive and valuable trademarks, to prevent Complainant from registering such Domains.
Respondent has intentionally attempted to attract Internet users to Respondent’s websites for commercial gain, by creating a likelihood of confusion with Complainant’s registered marks respecting the source, sponsorship, affiliation, or endorsement of Respondent’s Disputed Domain name web sites. Respondent’s use of Complainant’s marks in the Disputed Domains is entirely unauthorized.
Respondent is using Complainant’s distinctive and valuable marks, and
position as an industry leader in baseball and softball pitching equipment, cages and accessories, as a means of improperly attracting consumers to his websites. None of the Disputed Domains are legitimate websites; rather, each merely diverts customers to another site where sales activities are conducted.
According to Complainant Respondent’s bad faith is clearly demonstrated by the words of Jim Hibbs stated in his e-mail dated November 23, 2011: “If Wilson's insists on taking this bogus and malicious action to the NAF wasting valuable time and material if IB wins, which is not a big if at all, the price of the domains will at least double.”
B. Respondent
Respondent contends that it had a long, cooperative, harmonious and well documented relationship with Complainant as an approved dealer of ATEC branded products and parts.
Respondent sells only ATEC branded products and parts and not those of any other similar competitor.
Complainant actively condoned and facilitated Respondent’s activity as a dealer, providing him with promotional materials, product information, images, logos, and special “Super Dealer Pricing” in consideration of Respondent’s services rendered as a sales dealer. This is a contract, whether verbal or written, although written documents have proven this relationship. This is also tacit approval of Respondent’s activities as a dealer for a period of 15 years.
Respondent utilized all disputed domains solely in conjunction with a bona fide offering of Complainant’s branded products and parts.
Respondent therefore has rights or a legitimate interest in use of the disputed domains. Such usage must therefore also be deemed “fair use.”
Respondent has not registered disputed domains primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. Respondent owned and used the disputed domains the benefit of both parties for 15 years prior to any offer of sale.
Respondent has not registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. Hundreds of corresponding domain names exist and are available for the Complainant’s use. No effort was therefore made by the Respondent to “corner the market” regarding these domains.
Respondent has not registered the domain name primarily for the purpose of disrupting the business of Complainant, but rather to enhance, further increase, and augment Complainant’s business. Respondent was a top selling dealer of ATEC products, in which ATEC benefited from every sale. Respondent’s diligence, energy and considerable monetary investment resulted in millions of dollars in sales of ATEC products during the term of their relationship.
Respondent has clearly indentified his status and independent relationship to the Complainant on his web site and has made no effort to create a likelihood of confusion with the Complainant’s mark.
After 15 years of loyal service as an ATEC Dealer, Respondent’s offer of the disputed domains for equivalent out-of-pocket expenses was not in “bad faith,” and not evidence of “cybersquatting” as his primary interest in these disputed domains.
C. Additional Submissions
In its Additional Submission Complainant summarizes its contentions as follows:
“In the end, this case presents a classic case of unauthorized use of another’s trademarks in domain names, an attempt to transfer those marks in the form of domain names to the highest bidder, and attempt to threaten the owner of such marks that is should be the highest bidder in order to keep its trademark rights from getting into the hands of others. Respondent’s reaction to the filing of this action by Complainant – a threat and notice that the price demanded has now doubled – reinforces the bad faith scheme being employed by Respondent.”
In its Additional Submission Respondent contends that he has never disputed that the registered domain names are identical or confusingly similar to Complainant’s trademarks. Respondent asserts again that he registered these domains solely because they were descriptive of the products he sells on behalf of the Complainant, intending to make a truthful offering of said products. Respondent further asserts that his first use of said domains, irrespective of whether or not Complainant granted permission to do so, was a fair and legitimate use, intending no harm to Complainant and in fact was to the benefit of Complainant in every respect.
Complainant’s sole argument seems to be that no permission or license was granted to use these domains and no written agreement or contract permitting this exists. Yet their consent allowing the Respondent to advertise, offer and sell their trademarked goods, in and of itself, confers rights to the Respondent to truthfully represent these products by their registered trade names, and the use of domain names as a means of advertising these goods is therefore a “fair use.”
Complainant argues that the sole means of establishing legitimacy of “rights” is within the letter of trademark law and rests upon consent of the Complainant to the use of its registered marks. Complainant argues or implies that a license,
permission or written approval must exist to convey these rights, that only Complainant may decide how its marks are used, and that any implied permission may be withdrawn at any time, etc. All of this is arguable at a court having jurisdiction over trademark law.
Respondent asserts that Complainant’s “permission” is not the sole means of establishing legitimate rights, and that he may establish parallel rights based on fair use and a legitimate offering of Complainant’s goods.
The key issue here is not whether Complainant was aware of Respondent’s use of the disputed domains, or granted such permission, but whether, before any notice to the Respondent of the dispute, Respondent’s use of the domain names was and is in connection with a bona fide offering of goods, and not for purposes of cybersquatting. 15 years of faithful service as an approved and top selling ATEC dealer clearly prove this to be the case. At no time in that period did the Respondent utilize these domains for the purpose of selling them, nor has he offered them to any other person but ATEC, and then only after ATECs representative and employee Tim Greene expressed an interest in purchasing the Respondent’s domains, which initiated the negotiations that led to this dispute.
According to Respondent the facts of this case clearly disprove that any “bad faith” intent was present, and, to the contrary, they show the opposite: a good faith use of all the disputed domains in connection with a legitimate dealership and sale of Complainant’s products, solely for the mutual benefit of both parties in this dispute.
Complainant’s claim that they were unaware of the Respondent’s long term use of the disputed domains is salient evidence of their complete disinterest in the domains over that period. At no time, over 15 years, did they ever express interest in, or attempt to register, any of the disputed domains. If they had done so they would have been aware of the Respondent’s preexisting registration. It is only now, and to avoid fairly compensating the Respondent for his interest in the domains, that the Complainant seeks to have them transferred via this arbitration.
The Panel finds that:
1. the Domain Names <atecsports.net>, <atecsports.biz>, <atecsports.org>, <atecsports.ws>, <atecsports.info>, <armmachine.info>, <atec3g.com>, <atec3gpitchingmachine.com>, <atecarm.com>, <atecarm.info>, <atecarmmachine.com>, <atecarmmachine.info>, <atecbackstops.com>, <atecballs.com>, <atecbaseball.com>, <atecbaseballparts.com>, <atecbattingcages.biz>, <atecbattingcages.com>, <atecbattingcages.org>, <ateccages.biz>, <ateccages.com>, <ateccages.info>, <ateccages.net>, <atecfeeders.com>, <atecdealer.com>, <atecdealer.net>, <atecdistributor.com>, <atecequipment.com>, <atecmachines.com>, <atecparts.com>, <atecpitchingmachine.com>, <atecpitchingmachines.net>, <atecpitchingmachines.org>, <atecpowerstreak.com>, <atecradius.com>, <atecrookie.com>, <atecsales.com>, <atecsales.info>, <atecsales.net>, <atecsalesdealer.biz>, <atecsalesdealer.com>, <atecsalesdealer.info>, <atecsalesdealer.net>, <atecscreens.com>, <atecsoftball.com>, <atecsoftballparts.com>, <atecwheels.com>, <caseypro3g.com>, <caseypro3gpitchingmachine.com>, <caseyprodealer.com>, <caseypropitchingmachine.com>, <ateccaseypro.com>, <ateccaseypropitchingmachines.com>, <ateccaseypro3g.com>, <ateccaseypro3gpitchingmachine.com>, <atecjet.com>, <atecjetpitchingmachine.com>, and <jetpitchingmachine.com>, are confusingly similar to Complainant’s marks;
2. the Respondent has established rights and legitimate interests in the Domain Names <atecsports.net>, <atecsports.biz>, <atecsports.org>, <atecsports.ws>, <atecsports.info>, <armmachine.info>, <atec3g.com>, <atec3gpitchingmachine.com>, <atecarm.com>, <atecarm.info>, <atecarmmachine.com>, <atecarmmachine.info>, <atecbackstops.com>, <atecballs.com>, <atecbaseball.com>, <atecbaseballparts.com>, <atecbattingcages.biz>, <atecbattingcages.com>, <atecbattingcages.org>, <ateccages.biz>, <ateccages.com>, <ateccages.info>, <ateccages.net>, <atecfeeders.com>, <atecdealer.com>, <atecdealer.net>, <atecdistributor.com>, <atecequipment.com>, <atecmachines.com>, <atecparts.com>, <atecpitchingmachine.com>, <atecpitchingmachines.net>, <atecpitchingmachines.org>, <atecpowerstreak.com>, <atecradius.com>, <atecrookie.com>, <atecsales.com>, <atecsales.info>, <atecsales.net>, <atecsalesdealer.biz>, <atecsalesdealer.com>, <atecsalesdealer.info>, <atecsalesdealer.net>, <atecscreens.com>, <atecsoftball.com>, <atecsoftballparts.com>, <atecwheels.com>, <caseypro3g.com>, <caseypro3gpitchingmachine.com>, <caseyprodealer.com>, <caseypropitchingmachine.com>, <ateccaseypro.com>, <ateccaseypropitchingmachines.com>, <ateccaseypro3g.com>, <ateccaseypro3gpitchingmachine.com>, <atecjet.com>, <atecjetpitchingmachine.com>, and <jetpitchingmachine.com>, and
3. the Respondent has not registered and is not using the Domain Names <atecsports.net>, <atecsports.biz>, <atecsports.org>, <atecsports.ws>, <atecsports.info>, <armmachine.info>, <atec3g.com>, <atec3gpitchingmachine.com>, <atecarm.com>, <atecarm.info>, <atecarmmachine.com>, <atecarmmachine.info>, <atecbackstops.com>, <atecballs.com>, <atecbaseball.com>, <atecbaseballparts.com>, <atecbattingcages.biz>, <atecbattingcages.com>, <atecbattingcages.org>, <ateccages.biz>, <ateccages.com>, <ateccages.info>, <ateccages.net>, <atecfeeders.com>, <atecdealer.com>, <atecdealer.net>, <atecdistributor.com>, <atecequipment.com>, <atecmachines.com>, <atecparts.com>, <atecpitchingmachine.com>, <atecpitchingmachines.net>, <atecpitchingmachines.org>, <atecpowerstreak.com>, <atecradius.com>, <atecrookie.com>, <atecsales.com>, <atecsales.info>, <atecsales.net>, <atecsalesdealer.biz>, <atecsalesdealer.com>, <atecsalesdealer.info>, <atecsalesdealer.net>, <atecscreens.com>, <atecsoftball.com>, <atecsoftballparts.com>, <atecwheels.com>, <caseypro3g.com>, <caseypro3gpitchingmachine.com>, <caseyprodealer.com>, <caseypropitchingmachine.com>, <ateccaseypro.com>, <ateccaseypropitchingmachines.com>, <ateccaseypro3g.com>, <ateccaseypro3gpitchingmachine.com>, <atecjet.com>, <atecjetpitchingmachine.com>, and <jetpitchingmachine.com>, 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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that “Jim Hibbs” does business as “Instant Baseball.” Complainant asserts that eight domain names within the instant dispute are registered to “Instant Baseball,” but they all list Mr. Hibbs’s home address in the registrant information. Further, Complainant argues that 50 of the domain names are registered directly to “Jim Hibbs.” See Complainant’s Annex 5 and 6. The Panel notes that the address supplied under both the “Instant Baseball,” and “Jim Hibbs” registrants is identical, listing an address of 4659 Foothill Rd., Ventura, California 93003. Complainant further contends that it conducted searches in both California and Delaware for “Instant Baseball,” and that, not finding any such legal entity, has determined that none exists. See Complainant’s Annex 7. Therefore, Complainant argues that “Instant Baseball” is an entity which “Jim Hibbs” conducts business. The Panel also notes that Respondent has accepted ownership of all of the domain names within its Response.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Preliminary Issue: Dismissal as to the <armmachine.info> Domain Name
The Panel notes that the <armmachine.info> domain name does not contain any of Complainant’s trademarks that it has identified. Within the Complaint, Complainant states that “Arm” and “Arm Machine” are “the very goods covered by Complainant’s registrations, and describe Complainant’s actual products . . .” However, the Policy requires that the domain name be confusingly similar to, or identical to, a mark in which Complainant has rights. Therefore, the Panel takes the decision to dismiss the Complaint as to the <armmachine.info> domain name.
Complainant, Wilson Sporting Goods Co., ATEC Division, produces baseball and softball equipment, pitching machines, nets, ball tees, ball baskets, bat bags, protective screens, batting cages, and other sporting goods equipment under the following trademark registrations that it owns with the United States Patent and Trademark Office ("USPTO"):
Mark Reg. No. Filing Date Reg. Date
ATEC 1,902,873 June 13, 1994 July 4, 1995
CASEY 2,932,994 January 13, 2004 March 15, 2005
ROOKIE 2,436,104 January 30, 1998 March 20, 2001
JET 3,041,396 November 23, 2004 January 10, 2006
The Panel finds that Complainant’s trademark registrations with USPTO are sufficient to establish rights in the marks above under Policy ¶ 4(a)(i), rights which date back to the original filing date with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant contends that Respondent’s domain names are all confusingly similar to its marks. Complainant argues that forty-nine of the fifty-eight disputed domain names contain the ATEC trademark. The Panel notes that the domain names containing the ATEC mark are as follows:
<atecsports.net>, <atecsports.biz>, <atecsports.org>, <atecsports.ws>, <atecsports.info>, <atec3g.com>, <atec3gpitchingmachine.com>, <atecarm.com>, <atecarm.info>, <atecarmmachine.com>, <atecarmmachine.info>, <atecbackstops.com>, <atecballs.com>, <atecbaseball.com>, <atecbaseballparts.com>, <atecbattingcages.biz>, <atecbattingcages.com>, <atecbattingcages.org>, <ateccages.biz>, <ateccages.com>, <ateccages.info>, <ateccages.net>, <atecfeeders.com>, <atecdealer.com>, <atecdealer.net>, <atecdistributor.com>, <atecequipment.com>, <atecmachines.com>, <atecparts.com>, <atecpitchingmachine.com>, <atecpitchingmachines.net>, <atecpitchingmachines.org>, <atecpowerstreak.com>, <atecradius.com>, <atecsales.com>, <atecsales.info>, <atecsales.net>, <atecsalesdealer.biz>, <atecsalesdealer.com>, <atecsalesdealer.info>, <atecsalesdealer.net>, <atecscreens.com>, <atecsoftball.com>, <atecsoftballparts.com>, <atecwheels.com>, <atecrookie.com>, <ateccaseypro.com>, <ateccaseypropitchingmachines.com>, <ateccaseypro3g.com>, <ateccaseypro3gpitchingmachine.com>, <atecjetpitchingmachine.com>, and <atecjet.com>.
The Panel notes that each domain name contains the entire ATEC mark while adding various generic or descriptive terms, Complainant’s other registered marks, a number, the letter “g,” and/or a generic top-level domain (“gTLD”) or a country-code top-level domain (“ccTLD”). The Panel finds that such additions to Complainant’s mark are not sufficient to remove the domain names from the realm of confusing similarity under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also 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 Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”); see also Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Further the Panel notes that the <jetpitchingmachine.com> domain name contains the JET mark while adding the descriptive terms “pitching” and “machine” and the gTLD “.com.” The Panel finds that this domain name is confusingly similar to Complainant’s JET mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
The Panel also notes that the <caseypro3g.com>, <caseypro3gpitchingmachine.com>, <caseyprodealer.com>, and <caseypropitchingmachine.com> domain names all contain Complainant’s CASEY mark while also adding generic and descriptive terms, the number “3,” the letter “g,” and the gTLD “.com.” The Panel finds that these domain names are confusingly similar to Complainant’s CASEY mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”); 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); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent asserts that it has been an authorized dealer of Complainant’s goods since 1997 when it became the sole owner of “Instant Baseball.” Respondent contends that it was close to the original owner of ATEC, which was later acquired by Complainant, and began selling ATEC equipment through its website in 1997. Respondent asserts, in its Additional Submission, that it is making a legitimate and bona fide offering of goods through its website and that it is only using Complainant’s marks in the domain names to describe the products available. Respondent asserts that is has only sold ATEC products through its websites and that ATEC products had only been sold through independent dealer networks in the past. Respondent argues that a “reseller or dealer can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirement.” Respondent notes that these requirements include: the actual offering of goods and services at issue; use of the site to sell only the trademarked goods; and the site accurately discloses the registrant’s relationship with the trademark owner. Respondent argues that it meets all three requirements, as it offers the trademark goods, and only the trademarked goods, for sale on its website and has done so for over 15 years. Further, Respondent contends that its website states clearly that it is an “Authorized ATEC Dealer,” removing any confusion that it is actually ATEC. Respondent further notes that all of its sales take place directly through Complainant’s company, which then ships the products to Respondent’s buyers. As evidence that its business relationship exists and has been known to Complainant, Respondent offers e-mail correspondence from August of 2011 in which it is reportedly corresponding with an agent of Complainant. Respondent asserts that in this e-mail communication it is firmly established that Respondent has a dealer relationship with Complainant, as Respondent is getting the “Super Dealer” discount rate for Complainant’s products. Respondent also asserts that Complainant has approved of the domain names, marks, logos, and images to sell its products for many years because Respondent is a legitimate “Super Dealer” of its products. The Panel agrees with Respondent and finds that, where a dealer relationship is established, Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Farberware Licensing Co., LLC v. The Pfaltzgraff Co., FA 655015 (Nat. Arb. Forum May 5, 2006) (finding that the respondent’s use of the <farberware.com> domain name to sell the complainant’s FARBERWARE products constituted a bona fide offering of goods or services under Policy ¶ 4(c)(i) because the complainant’s predecessor had apparently authorized the respondent to register the domain name and establish a website for the complainant); see also Suspensions, LLC v. The LBC Group, Inc., FA 662305 (Nat. Arb. Forum May 5, 2006) (denying the complainant relief where the panel was unclear after reviewing the evidence in the record whether or not the complainant authorized the respondent to register a domain name containing its mark).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since the Panel has concluded that Respondent has rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent asserts that Complainant’s contentions regarding Policy ¶ 4(a)(i) are not true. Respondent contends that it has never said it would sell the domain names to anyone other than Complainant. Respondent argues that in contemplation of retirement, and in good faith, it offered the domain names to Complainant for consideration within the cumulative out-of-pocket expenses of purchasing and maintaining the domain names all of this time. Respondent contends that it had the domain names appraised by independent sources and that those appraisals showed a value “far in excess of the amount requested by Respondent for the entire group of contested domains.” Respondent maintains that it registered and used the domain names for many years in furtherance of its business operation and not primarily for the purpose of selling the domain names to Complainant or its competitors. The Panel agrees and finds that Respondent did not register or use the domain names in bad faith under Policy ¶ 4(b)(i). See LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (“[T]he mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling, renting, or transferring the domain name to the Complainant as required under [Policy ¶ 4(b)(i)].”); see also Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) (“Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name”).
Respondent contends that it did not register the disputed domain names with the intent of disrupting a competitor. Respondent states that it has never had any intention of disrupting the business of Complainant, but in fact Respondent has attempted to bolster Complainant’s business by being a product seller for Complainant. Respondent argues that Complainant knew of Respondent’s use of the domain names as a reseller and cannot claim that its business was being disrupted when it had the power to shut down Respondent’s use at any time. Respondent has asserted that its domain names accurately reflect the goods that are available through its website and that as such has not been used in bad faith. Respondent also states that all orders that are made on its website go directly through Complainant’s own warehouse and shipping facility and that Respondent has no items on hand to ship to customers. The Panel finds that Respondent did not register or use the domain names in bad faith under Policy ¶ 4(b)(iii). See Election Systems & Software, Inc. v. Stewart, FA 805224 (Nat. Arb. Forum Nov. 14, 2006) (Where the respondent registered the disputed domain name to reflect one of the products available from Respondent, the panel did not find bad faith pursuant to Policy ¶ 4(b)(iii)); see also Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Nat. Arb. Forum Nov. 29, 2006) (finding no bad faith registration and use where the respondent used the complainant’s trademark in its domain name in order to provide information on the complainant’s Options Exchange, and the respondent was not attempting to brand itself as related to the domain name or to steal business or customers from the complainant’s Options Exchange).
Lastly, Respondent argues that it has never attempted to confuse any Internet users into believing they were dealing with Complainant and that Respondent has clearly maintained that it is a dealer of Complainant’s products. Respondent asserts, within its Response and Additional Submission, that he has been selling Complainant’s products in a legitimate manner for many years as a dealer and that Complainant has actively endorsed Respondent as such. Further, Respondent points out that it keeps no products on hand, but that every sale goes directly through Complainant’s own warehouse and delivery systems. Therefore, Respondent argues that it has been a known dealer of Complainant’s products for many years and cannot be found to have registered the domain names in bad faith where it was making a legitimate use of the domain names. The Panel agrees and finds that Respondent has not registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Weber-Stephen Prods. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (finding that the respondent as a licensed dealer of the complainant’s products was using <webergrills.com>, <webergrill.com>, <weber-grills.com>, <weber-grill.com>,<webergrillsource.com>, <webergrillstore.com>, <webergrillshowroom.com>, <webergrills-ah.com>, <webgrills.com>, and <web-grills.com> in good faith because the complainant was aware of and repeatedly approved the respondent’s website over a period of three years); see also Accu-Find Internet Servs. v. AccuFind, FA 94831 (Nat. Arb. Forum June 19, 2000) (denying the complainant’s request because the complainant’s allegations that the respondent registered the disputed domain name to divert Internet users from the complainant’s business were not sufficiently substantiated under Policy ¶ 4(a)(iii)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <atecsports.net>, <atecsports.biz>, <atecsports.org>, <atecsports.ws>, <atecsports.info>, <armmachine.info>, <atec3g.com>, <atec3gpitchingmachine.com>, <atecarm.com>, <atecarm.info>, <atecarmmachine.com>, <atecarmmachine.info>, <atecbackstops.com>, <atecballs.com>, <atecbaseball.com>, <atecbaseballparts.com>, <atecbattingcages.biz>, <atecbattingcages.com>, <atecbattingcages.org>, <ateccages.biz>, <ateccages.com>, <ateccages.info>, <ateccages.net>, <atecfeeders.com>, <atecdealer.com>, <atecdealer.net>, <atecdistributor.com>, <atecequipment.com>, <atecmachines.com>, <atecparts.com>, <atecpitchingmachine.com>, <atecpitchingmachines.net>, <atecpitchingmachines.org>, <atecpowerstreak.com>, <atecradius.com>, <atecrookie.com>, <atecsales.com>, <atecsales.info>, <atecsales.net>, <atecsalesdealer.biz>, <atecsalesdealer.com>, <atecsalesdealer.info>, <atecsalesdealer.net>, <atecscreens.com>, <atecsoftball.com>, <atecsoftballparts.com>, <atecwheels.com>, <caseypro3g.com>, <caseypro3gpitchingmachine.com>, <caseyprodealer.com>, <caseypropitchingmachine.com>, <ateccaseypro.com>, <ateccaseypropitchingmachines.com>, <ateccaseypro3g.com>, <ateccaseypro3gpitchingmachine.com>, <atecjet.com>, <atecjetpitchingmachine.com>, and <jetpitchingmachine.com> domain names REMAIN WITH Respondent.
Dr. Reinhard Schanda, Panelist
Dated: January 10, 2012
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