Saatchi & Saatchi North America, Inc. v. Chris Sandberg
Claim Number: FA1210001469072
Complainant is Saatchi & Saatchi North America, Inc. (“Complainant”), represented by Mark Lerner of Satterlee Stephens Burke & Burke LLP, New York, USA. Respondent is Chris Sandberg (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teamone-usa.net>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2012; the National Arbitration Forum received payment on October 25, 2012.
On October 25, 2012, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <teamone-usa.net> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 October 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 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@teamone-usa.net. Also on October 30, 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 December 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
1.Complainant contends that it has rights in the TEAM ONE mark. Complainant has used the mark since 1987 in connection with advertising, marketing, and public relations services. Complainant has been continuously using the mark since its inception. In 1987 Complainant and the TEAM ONE mark were created to launch Toyota Motor Corporation’s Lexus automobile brand in the United States. Since this time, Complainant has gained national renown for developing and running promotional and advertising campaigns for such widely known companies and brands. In addition to the Lexus brand, Complainant has been involved with such brands as American Express Company, Ritz-Carlton hotels, Bombardier-Flexjet, Haagen-Dazs International, and more. Complainant created the <teamone-usa.com> domain name in 2004 for use in connection with the TEAM ONE mark and Complainant’s services. Complainant also uses the e-mail in connection with the domain to promote its advertising and marketing services. Complainant notes that the <teamone-usa.net> domain name received over 89,000 visiting in the last year. The successes of Complainant’s services are regularly covered in industry media such as Advertising Age and Adweek and are also featured in stories in national newspapers such as The Wall Street Journal and The New York Times. Complainant received the Media Plan of the Year award in 2012 from Adweek. Complainant also does a great deal of promotion of its services on its own through Internet platforms such as Facebook, Twitter, LinkedIn, and Google+.
2.The <teamone-usa.net> domain name is confusingly similar to the TEAM ONE mark. To the TEAM ONE mark, Respondent merely adds the geographic identifier “usa,” a hyphen, and the generic top-level domain (“gTLD”) “.net” and deletes the space between the words.
3.Respondent has no rights or legitimate interests in respect of the domain name;
4.Respondent is not commonly known by the <teamone-usa.net> domain name. Complainant has never granted rights to Respondent to use the TEAM ONE mark.
5.The <teamone-usa.net> domain name resolves to a website with no content associated with it. Respondent has used the e-mail addresses from the <teamone-usa.net> domain name in connection with fraudulently soliciting advertising services at the cost of Complainant. The e-mails sent from Respondent purport to be from an account executive, Chris Sandberg, at Team One USA acting on behalf of Complainant attempting to obtain advertising for “Viacom.” The advertisers, believing Respondent’s e-mails to be legitimate, carry out the orders and bill Complainant later for numerous accounts in excess of $10,000 and even $17,000.
6.The domain name has been registered and is being used in bad faith.
7.Complainant’s business is being disrupted by the <teamone-usa.net> domain name. Internet users have been made to believe that Respondent and the disputed domain name are associated with Complainant.
8.Respondent attempts to capitalize on Complainant’s reputation and good will. Respondent’s use of the <teamone-usa.net> domain name in connection with competing advertising services creates a false and misleading impression that the disputed domain name is related to, associated with, or endorsed by Complainant. Respondent states that e-mails sent from the <teamone-usa.net> domain name have caused actual confusion in the marketplace and facilitated Respondent’s impersonation of Complainant and engagement in fraudulent commercial transactions. Complainant notes that it uses the e-mail addresses from its own <teamone-use.com> domain to promote its services and Respondent’s e-mails are sent from the <teamone-usa.net> domain name, only different based on the gTLD used.
9.Respondent had actual notice of Complainant’s rights in the TEAM ONE mark when Respondent registered the <teamone-usa.net> domain name. This is evidenced by the fact that the disputed domain name is confusingly similar to the TEAM ONE mark and substantively identical to Complainant’s <teamone-use.com> domain name. Additionally, Respondent is using the e-mail address with the <teamone-usa.net> domain name to pretend to be an account executive with “Team One USA” who works on behalf of Complainant and which places orders that are ultimately billed to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is an established international company engaged in the provision of advertising and related services.
2. Complainant has and had at all material times common law trademark rights in TEAM ONE which it has used in commerce in the United States continuously since at least 1987 for advertising and related services.
3. Respondent registered the disputed domain name on August13, 2012. It has used the domain name to impersonate Complainant and to engage in fraudulent activities.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant asserts that it has rights in the TEAM ONE mark. Panels have determined that the registration of a mark with a trademark authority is clear evidence of having rights in the mark. However, panels have also found that trademark registration is not essential and that it is sufficient if Complainant has a common law or unregistered trademark. In the present case, Complainant submits that it has a common law or unregistered trademark in TEAM ONE. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel has therefore reviewed Complainant’s evidence and submissions to see if it has made out its case for common law rights trademark rights in the TEAM ONE mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that it has common law rights in the TEAM ONE mark because it has used the mark since 1987 in connection with advertising, marketing, and public relations services and has been continuously using the mark since its inception, that the public associate the mark as the source of the goods and services it provides and that the mark is a mark owned by Complainant. To summarize the evidence, in 1987 Complainant and the TEAM ONE mark were created to launch Toyota Motor Corporation’s Lexus automobile brand in the United States. Since this time, Complainant states that it has gained national renown for developing and running promotional and advertising campaigns for such widely known companies and brands as Lexus, American Express Company, Ritz-Carlton hotels, Bombardier-Flexjet, Haagen-Dazs International, and more. Complainant argues that it created the <teamone-usa.com> domain name in 2004 for use in connection with the TEAM ONE mark and Complainant’s services, and Complainant uses the e-mail in connection with the domain name to promote its advertising and marketing services. Complainant notes that the <teamone-usa.net> domain name received over 89,000 visiting in the last year. The successes of Complainant’s services under the TEAM ONE name are regularly covered in industry media such as Advertising Age and Adweek and are also featured in stories in national newspapers such as The Wall Street Journal and The New York Times. Complainant notes that it received the Media Plan of the Year award in 2012 from Adweek. Complainant next alleges that it also does a great deal of promotion of its services on its own through Internet platforms such as Facebook, Twitter, LinkedIn, and Google+. Panels have held that the continuous, ongoing use of a mark such that it acquires secondary meaning is evidence of having rights in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Having regard to the detailed factual case presented by Complainant the Panel finds that Complainant has common law trademark rights in the TEAM ONE mark pursuant to Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TEAM ONE common law trademark. Complainant contends that the <teamone-usa.net> domain name is confusingly similar to the TEAM ONE mark. To the TEAM ONE mark, Complainant argues, Respondent merely adds the geographic identifier “usa,” a hyphen, and the gTLD “.net” and deletes the space between words. In Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006), the panel held that the addition of a geographic term fails to distinguish a mark from the domain name into which it is incorporated. In the present case, the domain name would indubitably be interpreted as a domain name that related to the activities of Team One and hence of Complainant in the USA. Panels have also held that the addition of a hyphen to a mark in a domain name fails to create a distinction between the mark and the domain name in which it is used. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). The panel in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), held that the addition of gTLDs and the deletion of spaces between words are minor changes that do not remove a disputed domain name from the realm of confusing similarity. The Panel agrees with the views expressed in these decisions and is of opinion that they are applicable to the present case Therefore, the Panel finds that Respondent’s <teamone-usa.net> domain name is confusingly similar to Complainant’s TEAM ONE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s common law trademark TEAM ONE and to use it in its domain name, making only various minor changes including adding a geographic expression “usa” to the trademark ;
(b) Respondent has then used the domain name to impersonate Complainant and to perpetrate a fraud on the business community at the expense of Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant asserts that Respondent does not have rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the <teamone-usa.net> domain name. Complainant argues that it has never granted rights to Respondent to use the TEAM ONE mark. Additionally, the Panel notes that the WHOIS record for the <teamone-usa.net> domain name lists “Chris Sandberg” as the domain name registrant. Panels have found that information such as a lack of authorization to use a mark and an unfavorable WHOIS record demonstrates that a respondent is not commonly known by a disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that Respondent is not commonly known by the <teamone-usa.net> domain name pursuant to Policy ¶ 4(c)(ii);
(e) Next, Complainant alleges that Respondent’s use of the <teamone-usa.net> domain name is evidence of a lack of rights and legitimate interests. Complainant notes that while the <teamone-usa.net> domain name resolves to a website with no content associated with it, Respondent has used the e-mail address from the <teamone-usa.net> domain name, chris.sandberg@teamone-use.net, in connection with the fraudulent solicitation of advertising services in the course of which Respondent has tried to shift the cost of those services to Complainant. Complainant notes that the e-mails sent from Respondent purport to be from an account executive, Chris Sandberg, at Team One USA acting on behalf of Complainant attempting to obtain advertising for “Viacom.” The advertisers, believing Respondent’s e-mails to be legitimate, carry out the orders and bill Complainant later for numerous accounts in excess of $10,000 and even $17,000, Complainant establishes. As such, the Panel finds that Respondent’s use of the <teamone-usa.net> domain name 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 Alienware Corp. v. Dann, FA 1290045 (Nat. Arb. Forum Dec. 28, 2009) (“If the use of the disputed domain name by itself as an email address for the Respondent amounted to bona fide use, UDRP would become easily avoidable.”); see also The Royal Bank of Scotland Grp plc v. Onoyiwheta, FA 1344240 (Nat. Arb. Forum Oct. 16, 2010) (finding bad faith where a respondent uses a disputed domain name in unsolicited email purporting to have been sent from the complainant).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent registered and is using the <teamone-usa.net> domain name in bad faith. Complainant contends that its business is being disrupted by the <teamone-usa.net> domain name. Internet users have been made to believe that Respondent and the disputed domain name are associated with Complainant. Complainant notes that Respondent uses the domain name to send e-mails purporting to be from an account executive for Team One USA so that it may obtain advertising free of charge because its plan was that Complainant would ultimately receive and pay the invoice. Panels have found that a disputed domain name registered and used for their e-mail capability for fraudulent purposes are disruptive to the complainant’s business. See Am. Int’l Grp., Inc. v. AIG, FA 1060803 (Nat. Arb. Forum Sept. 21, 2007) (finding that bad faith is demonstrated when a disputed domain name is used to send unsolicited emails to Internet users). Therefore, the Panel finds that Respondent registered and is using the <teamone-usa.net> domain name in bad faith because it is disruptive pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant asserts that Respondent’s bad faith is also evident due to Respondent’s attempt to capitalize on Complainant’s reputation and good will. Complainant argues that Respondent’s use of the <teamone-usa.net> domain name in connection with competing advertising services creates a false and misleading impression that the disputed domain name is related to, associated with, or endorsed by Complainant. Complainant states that e-mails sent from the <teamone-usa.net> domain name have caused actual confusion in the marketplace and facilitated Respondent’s impersonation of Complainant and engagement in fraudulent commercial transactions. Complainant contends that it has received invoices in excess of $17,000 for the orders made by Respondent as a result of Respondent’s bad faith registration and use of the <teamone-usa.net> domain name. Complainant notes that it uses the e-mail addresses from its own <teamone-use.com> domain to promote its services and Respondent’s e-mails are sent from the <teamone-usa.net> domain name, with the only difference being the gTLD used. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.").
Thirdly, Complainant submits that Respondent had actual notice of Complainant’s rights in the TEAM ONE mark when Respondent registered the <teamone-usa.net> domain name. Complainant contends that this is evidenced by the fact that the disputed domain name is confusingly similar to the TEAM ONE mark and substantively identical to Complainant’s <teamone-use.com> domain name. Additionally, Complainant notes that Respondent is using the e-mail address with the <teamone-usa.net> domain name to pretend to be an account executive with “Team One USA” who works on behalf of Complainant and which places orders that are ultimately billed to Complainant. The Panel agrees with Complainant regarding Respondent's actual knowledge and conclude that Respondent registered the <teamone-usa.net> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using Complainant’s TEAM ONE mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teamone-usa.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 8, 2012
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