World Triathlon Corporation v. brisport science / fabrizio fabrizio
Claim Number: FA1208001459277
Complainant is World Triathlon Corporation (“Complainant”), represented by Brooks Cowan of World Triathlon Corporation, Florida, USA. Respondent is brisport science / fabrizio fabrizio (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ironmanbarcelona.com>, registered with Enom, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2012; the National Arbitration Forum received payment on August 22, 2012.
On August 22, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ironmanbarcelona.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 August 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@ironmanbarcelona.com. Also on August 28, 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 September 17, 2012 and September 21, 2012 the Forum received an email from Respondent. The emails were not in compliance with ICANN Rule #5(a) and/or the Annex to the Supplemental Rules and were not considered by the Panel.
On September 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
Complainant:
a) Complainant has rights in the IRONMAN mark.
i. The mark was used in connection with the organization and promotion of triathlon competitions around the world.
ii. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the IRONMAN mark (e.g., Reg. No. 1,873,783 registered January 17, 1995).
b) The <ironmanbarcelona.com> domain name is confusingly similar to the IRONMAN mark.
i. Respondent merely added the geographic term “barcelona” and the generic top-level domain (“gTLD”) “.com” to the IRONMAN mark.
c) Respondent has neither rights nor legitimate interests in the disputed domain name.
i. Respondent is not commonly known by the <ironmanbarcelona.com> domain name.
ii. The <ironmanbarcelona.com> domain name resolves to a parked website.
d) Respondent registered and is using the <ironmanbarcelona.com> domain name in bad faith.
i. Respondent was willing to make a sale arrangement for the <ironmanbarcelona.com> domain name.
ii. Respondent was aware of Complainant’s rights in the IRONMAN mark when it registered the <ironmanbarcelona.com> domain name.
Respondent did not submit a compliant Response.
For the reasons set forth below, the panel finds Complainant is entitled to the relief requested.
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 asserts that it has rights in IRONMAN mark, used in connection with the organization and promotion of world-wide triathlon competitions. Complainant provides evidence to the Panel that Complainant is the owner of the USPTO registrations for the IRONMAN mark (e.g., Reg. No. 1,873,783 registered January 17, 1995). In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panel held that registration of a mark is evidence of rights in the mark. In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), the panel supplemented this finding, stating that such trademark registrations satisfied Policy ¶ 4(a)(i) regardless of the location of the parties. Therefore, the Panel finds that Complainant has rights in the IRONMAN mark under Policy ¶ 4(a)(i).
Complainant argues that the <ironmanbarcelona.com> domain name is confusingly similar to the IRONMAN mark. In the disputed domain name, Respondent combines Complainant’s mark with the geographic term “barcelona” and the generic top-level domain (“gTLD”) “.com.” Panels have found that the addition of a geographic term to a mark does not remove a domain name from the realm of confusing similarity. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Additionally, panels have held that the addition of a gTLD is not cause for the negating of a finding of confusing similarity. See 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). Therefore, the Panel finds that Respondent’s <ironmanbarcelona.com> domain name is confusingly similar to the IRONMAN mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant asserts that Respondent is not commonly known by the <ironmanbarcelona.com> domain name. Complainant argues that Respondent was not a licensee of Complainant and is not authorized to use the IRONMAN man. The WHOIS record for the <ironmanbarcelona.com> domain name lists “brisport science / fabrizio fabrizio” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <ironmanbarcelona.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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).
Complainant contends that Respondent’s use of the <ironmanbarcelona.com> domain name is evidence of Respondent’s lack of rights and legitimate interests. Complainant asserts that the <ironmanbarcelona.com> domain name resolves to a parked website. The screenshots Complainant provides of the resolving website demonstrate that the disputed domain name is actually inactive. In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel found that the inactive holding of a website is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Therefore, the Panel finds that Respondent’s non-use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(i) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant asserts that Respondent registered and is using the <ironmanbarcelona.com> domain name in bad faith. According to Complainant, Respondent refused Complainant’s offer to reimburse Respondent for its out-of-pocket costs in exchange for the disputed domain name and instead insisted that the expenses be reimbursed, that Complainant hold an IRONMAN competition in Barcelona within five years, and that Respondent would receive three free entries into the competition. The Panel finds that Respondent intended to register and use the disputed domain name in order to sell it to Complainant for expenses and other benefits. Therefore, the Panel finds that Respondent registered and is using the <ironmanbarcelona.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent’s requests for money as well as advice from professors at the complainant’s university in exchange for transferring the disputed domain name suggested bad faith registration and use under Policy ¶ 4(b)(i)).
Complainant contends that the website resolving from the disputed domain name is further evidence of bad faith. The Panel notes that the <ironmanbarcelona.com> domain name resolves to an inactive website. The panel in DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), found that the non-use of a domain name is evidence of bad faith. Therefore, the Panel finds that Respondent registered and is inactively holding the <ironmanbarcelona.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant contends that Respondent was aware of Complainant’s rights in the IRONMAN mark at the time Respondent registered the <ironmanbarcelona.com> domain name. Complainant asserts that this is evidenced by Respondent’s participation in Complainant’s events and its request for compensation specific to Complainant’s offerings when negotiating the transfer of the disputed domain name. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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).
Complainant has proven this element.
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 <ironmanbarcelona.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 24, 2012
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