Finish Line, Inc. v. Abadaba S.A.
Claim Number: FA1205001442808
Complainant is Finish Line, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Abadaba S.A. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fininshline.com>, registered with Fabulous.Com Pty Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2012; the National Arbitration Forum received payment on May 8, 2012.
On May 8, 2012, Fabulous.Com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <fininshline.com> domain name is registered with Fabulous.Com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.Com Pty Ltd has verified that Respondent is bound by the Fabulous.Com Pty Ltd 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 May 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2012 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@fininshline.com. Also on May 15, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant has rights in the FINISH LINE mark which it uses in connection with retail store goods and services related to men’s, women’s, and children’s athletic and leisure footwear, shoes, and other clothing;
b) Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for the FINISH LINE mark (e.g., Reg. No. 1,772,105 registered May 18, 1993);
c) The <fininshline.com> domain name is confusingly similar to the FINISH LINE mark;
d) Respondent is not commonly known by the <fininshline.com> domain name;
e) The <fininshline.com> domain name is used to display links to goods and services that compete with those Complainant offers in connection with the FINISH LINE mark;
f) Respondent has established a pattern of bad faith registration of disputed domain names;
g) Respondent is using Complainant’s mark in the <fininshline.com> domain name to take achieve a wrongful competitive advantage and to commercially gain;
h) Respondent has engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Finish Line, Inc., uses the FINISH LINE mark in connection with retail store goods and services related to men’s, women’s, and children’s athletic and leisure footwear, shoes, and other clothing. Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for the FINISH LINE mark (e.g., Reg. No. 1,772,105 registered May 18, 1993).
Respondent, Abadaba, S.A., registered the <fininshline.com> domain name on September 23, 2005. Respondent uses the <fininshline.com> domain name to display links to goods and services that compete with those Complainant offers in connection with the FINISH LINE mark.
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.
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.”).
Complainant has registered the FINISH LINE mark with the USPTO (e.g., Reg. No. 1,772,105 registered May 18, 1993). The registration of a mark, regardless of the location of the parties, is sufficient to demonstrate rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the FINISH LINE mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <fininshline.com> domain name is confusingly similar to the FINISH LINE mark. Respondent’s addition of a single letter, “n,” to the FINISH LINE mark fails to make the <fininshline.com> domain name distinct from Complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Respondent’s deletion of the space in Complainant’s mark between FINISH and LINE and the addition of the generic top-level domain (“gTLD”) “.com” are irrelevant to a Policy ¶ 4(a)(i) determination. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <fininshline.com> domain name is confusingly similar to the FINISH LINE mark under Policy ¶ 4(a)(i).
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).
Respondent is not commonly known by the <fininshline.com> domain name. Respondent is not licensed, authorized, or permitted to register domain names incorporating Complainant’s mark. Additionally, the WHOIS record for the <fininshline.com> domain name lists “Abadaba S.A.” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <fininshline.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The <fininshline.com> domain name resolves to a website which displays links to competing third-party websites. The display of links to competing third-party website is not a use of a disputed domain name protected by Policy ¶¶ 4(c)(i) and 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <fininshline.com> domain name.
Respondent, Abadaba S.A., has been the respondent in multiple previous UDRP proceedings that resulted in the disputed domain names in those cases being transferred to the respective complainants. See Travelocity.com LP v. Abadaba S.A. c/o Domain Admin a/k/a Abadaba S.A. c/o Adminstrador de dominios, FA 1296623 (Nat. Arb. Forum Jan. 25, 2010); see also Vanguard Trademark Holdings USA LLC v. Abadaba S.A., FA 1333290 (Nat. Arb. Forum Aug. 16, 2010); see also Enterprise Holdings, Inc. v. Domain Admin / Abadaba S.A., FA 1334655 (Nat. Arb. Forum Aug. 21, 2010). Multiple adverse UDRP proceedings constitute evidence of Respondent’s serial cybersquatting and Respondent’s bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Respondent’s <fininshline.com> domain name resolves to a website which displays links to third-party websites that directly compete with Complainant in the footwear industry. Respondent registered and is using the <fininshline.com> domain name in order to attract, for commercial gain, Internet users to the <fininshline.com> domain name by creating confusion as to the source, sponsorship, or affiliation of the <fininshline.com> domain name. Therefore, Respondent registered and is using the <fininshline.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, the <fininshline.com> domain name is a typosquatted version of the FINISH LINE mark and this further shows Respondent’s bad faith. Typosquatting a mark in a disputed domain name is evidence of bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Respondent registered and is using the <fininshline.com> domain name in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fininshline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 21, 2012
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