Athletic Business Publications, Inc. v. N/A / PAVEL KHOMENKO
Claim Number: FA1206001447306
Complainant is Athletic Business Publications, Inc. (“Complainant”), represented by Britton Payne of Foley & Lardner LLP, New York, USA. Respondent is N/A / PAVEL KHOMENKO (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <athletic-business.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2012; the National Arbitration Forum received payment on June 5, 2012.
On June 7, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <athletic-business.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com 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 June 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@athletic-business.com. Also on June 7, 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 July 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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:
Respondent’s <athletic-business.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ATHLETIC BUSINESS mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ATHLETIC BUSINESS mark, which it uses in connection with a sports-related magazine and educational services. Complainant owns registrations for the ATHLETIC BUSINESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,643,952 registered May 7, 1991). Respondent is not commonly known by the <athletic-business.com> domain name and has not been authorized to use the ATHLETIC BUSINESS mark. The <athletic-business.com> domain name previously resolved to a website which was a mirror image of Complainant’s website, including a field for collecting the e-mail addresses of Internet users, in order to pass itself off as Complainant’s website. Further, the <athletic-business.com> domain name was previously used in connection with a phishing scheme and currently resolves to an inactive website. Respondent registered the <athletic-business.com> domain name on November 3, 2011.
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 rights in the ATHLETIC BUSINESS mark, which Complainant uses in connection with a sports-related magazine and educational services. Complainant owns USPTO registrations for the ATHLETIC BUSINESS mark (e.g., Reg. No. 1,643,952 registered May 7, 1991). Therefore, the Panel finds that Complainant has rights in the ATHLETIC BUSINESS mark pursuant to Policy ¶ 4(a)(i). See 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).
The <athletic-business.com> domain name is confusingly similar to the ATHLETIC BUSINESS mark. Respondent makes the following changes to Complainant’s mark: the addition of a hyphen, the deletion of a space, and the addition of the generic top-level domain (“gTLD”) “.com.” The addition of a hyphen does not negate a finding of confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The deletion of a space and the addition of a gTLD do not bar the Panel from determining that the disputed domain name is confusingly similar to a mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel finds that Respondent’s <athletic-business.com> domain name is confusingly similar to the ATHLETIC BUSINESS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has no connection or affiliation with Complainant and no permission to use the ATHLETIC BUSINESS mark. The WHOIS record does not identify Respondent as anything similar to the <athletic-business.com> domain name. Rather, the WHOIS record for the <athletic-business.com> domain name that Complainant provides lists “N/A / PAVEL KHOMENKO” as the domain name registrant. Therefore, Respondent is not commonly known by the <athletic-business.com> domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
The <athletic-business.com> domain name previously resolved to a website which displayed a mirror image of Complainant’s genuine website, including a field for collecting e-mail addresses of the Internet users who inadvertently visit Respondent’s website instead of Complainant’s. Respondent displayed such content in an attempt to pass off as Complainant and operate a phishing scheme to obtain personal information by fraudulent means. Respondent’s attempt to pass itself off as the Complainant is evidence of a lack of rights and legitimate interests. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The operation of a phishing scheme is similarly demonstrative of a lack of rights and legitimate interests. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Respondent’s previous use of the <athletic-business.com> domain name was neither a Policy ¶¶ 4(c)(i) and 4(c)(iii) bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent’s current non-use of the <athletic-business.com> domain name is further evidence of a lack of rights and legitimate interests. After having the website host remove content from the <athletic-business.com> domain name, Respondent has allowed the disputed domain name to remain inactive. Therefore, Respondent’s holding of the <athletic-business.com> domain name as inactive is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The <athletic-business.com> domain name was generally meant to trade off of the goodwill established in the ATHLETIC BUSINESS mark by exploiting the likelihood of confusion of Complainant’s mark with the <athletic-business.com> domain name for commercial gain. The <athletic-business.com> domain name is so confusingly similar to the ATHLETIC BUSINESS mark that Internet users will believe that any website appearing at the <athletic-business.com> domain name is an authorized and authentic website of Complainant’s, even though it is not. Therefore, Respondent’s intent in registering the <athletic-business.com> domain name was to take commercial advantage of Internet users’ mistakes and this clearly demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
The <athletic-business.com> domain name previously resolved to a website which displayed a doppelganger website of Complainant’s in an attempt to pass the <athletic-business.com> domain name off as being Complainant’s official website or a site affiliated with it. The registration and use of a disputed domain name in order to create a wrongful association with the complainant demonstrates the respondent’s bad faith intentions. See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudulently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Therefore, Respondent registered and was using the <athletic-business.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Further, the <athletic-business.com> domain name currently resolves to a completely inactive website. The panel in DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), concluded that a respondent’s failure to make an active use of a domain name establishes bad faith under ¶ 4(a)(iii) of the Policy. Therefore, the Panel finds that Respondent’s current non-use of the <athletic-business.com> domain name allows it to find that Respondent’s actions are a product of bad faith under Policy ¶ 4(a)(iii).
In light of Complainant’s substantial marketing, promotional, and advertising efforts in connection with the ATHLETIC BUSINESS mark, as well as the famous and distinctive nature of the ATHLETIC BUSINESS mark, it is inconceivable that Respondent could have registered the <athletic-business.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel does agree with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <athletic-business.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 5, 2012
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