Bass Pro Intellectual Property, LLC v. Michael tripp
Claim Number: FA1210001469453
Complainant is Bass Pro Intellectual Property, LLC (“Complainant”), represented by Laura C. Gustafson of Pillsbury Winthrop Shaw Pittman, LLP, California, USA. Respondent is Michael tripp (“Respondent”), represented by Mike Tripp, Idaho, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <bassprofishing.net>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2012; the National Arbitration Forum received payment on October 31, 2012.
On November 1, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bassprofishing.net> 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 November 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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@bassprofishing.net. Also on November 5, 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 10, 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:
1. Respondent’s <bassprofishing.net> domain name, the domain name at issue, is confusingly similar to Complainant’s BASS PRO mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. 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 BASS PRO mark, used in connection with retail stores selling goods related to outdoor activities such as fishing, hunting, and camping and is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the BASS PRO mark (Reg. No. 2,192,947 registered October 6, 1998). The <bassprofishing.net> domain name is confusingly similar to the BASS PRO mark. Respondent merely deletes the space between words and adds the descriptive term “fishing” and the generic top-level domain (“gTLD”) to the mark. Respondent is not commonly known by the <bassprofishing.net> domain name and is not authorized by Complainant to use the BASS PRO mark. Respondent’s name is “Mike Tripp” and not “Bass Pro” or “BassProFishing.net.” The <bassprofishing.net> domain name resolves to a website featuring advertisements and links to goods and services that compete with the products Complainant offers. Respondent replied to an e-mail from Complainant demanding the transfer of the <bassprofishing.net> domain name noting that the disputed domain name receives a “huge amount of traffic” and offered to sell the domain name to Complainant. The <bassprofishing.net> domain name is disruptive to Complainant’s business. Respondent is misleadingly diverting consumers to its website and Respondent’s only purpose in using the <bassprofishing.net> domain name is to benefit from the goodwill and fame of the BASS PRO mark in order to drive visitors to Respondent’s website to increase traffic and revenue, based on consumer confusion with the BASS PRO mark and Complainant’s website. Respondent had at least constructive knowledge of Complainant’s rights in the BASS PRO mark prior to registering and using the <bassprofishing.net> domain name. Complainant’s trademark registration for its mark far predates Respondent’s registration of the <bassprofishing.net> domain name. Respondent’s actual knowledge of Complainant’s rights is demonstrated by Respondent’s use of the confusingly similar disputed domain name to display links to Complainant’s competitors. The <bassprofishing.net> domain name was registered by Respondent on March 15, 2010.
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 BASS PRO mark, used in connection with retail stores selling goods related to outdoor activities such as fishing, hunting, and camping, and Complainant is the owner of the USPTO registration for the BASS PRO mark (Reg. No. 2,192,947 registered October 6, 1998). Registration of a mark with a federal trademark authority clearly evidences rights in a mark. Therefore, Complainant has rights in the BASS PRO 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 <bassprofishing.net> domain name is confusingly similar to the BASS PRO mark. Respondent merely deletes the space between words and adds the descriptive term “fishing” and the gTLD to the mark. The addition of a descriptive term to a mark does not remove the confusing similarity between the mark and the domain name. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Panels have also found that the deletion of spaces and addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. 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, Respondent’s <bassprofishing.net> domain name is confusingly similar to the BASS PRO mark pursuant to 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 is not authorized by Complainant to use the BASS PRO mark. The WHOIS record, Respondent’s name is “Mike Tripp” and not “Bass Pro” or “BassProFishing.net.” See Complainant’s Amended Complaint Annex. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel held that the WHOIS record is often determinative of whether a respondent is commonly known by a disputed domain name. Therefore, Respondent is not commonly known by the <bassprofishing.net> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s lack of rights and legitimate interests in the disputed domain name is demonstrated by Respondent’s use of the <bassprofishing.net> domain name. Complainant evidences that the <bassprofishing.net> domain name resolves to a website featuring advertisements and links to goods and services that compete with the products Complainant offers. Therefore, Respondent’s use of the <bassprofishing.net> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent’s offer to sell the disputed domain name to Complainant demonstrates Respondent’s lack of rights and legitimate interests. Complainant notes that on October 2, 2012 Respondent replied to an e-mail from Complainant and Respondent asked if Complainant would like to purchase the traffic-heavy domain. The willingness to sell a domain name suggests a lack of rights and legitimate interests. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Therefore, Respondent does not have rights or legitimate interests in the <bassprofishing.net> domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent replied to Complainant’s e-mail, demanding the transfer of the <bassprofishing.net> domain name, noting that the disputed domain name receives a “huge amount of traffic” and offered to sell the domain name to Complainant. Respondent’s willingness to sell the <bassprofishing.net> domain name demonstrates that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
The <bassprofishing.net> domain name is disruptive to Complainant’s business. The <bassprofishing.net> domain name resolves to a website where Respondent provides advertisements and links to Complainant’s competitors and their competing goods. Respondent is misleadingly diverting consumers to its website. The panel in Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), held that the use of a domain name to display competitive ads and links is disruptive to the success of the respective complainant’s business. Therefore, Respondent’s registration and use of the <bassprofishing.net> domain name is disruptive to Complainant’s business conducted in connection with the BASS PRO mark and is therefore a product of bad faith under Policy ¶ 4(b)(iii).
The disputed domain name displays links to competing goods and vendors. Respondent’s only purpose in using the <bassprofishing.net> domain name is to benefit from the goodwill and fame of the BASS PRO mark in order to drive visitors to Respondent’s website to increase traffic and revenue. Respondent is making an effort to generate traffic to the <bassprofishing.net> domain name based on consumer confusion with the BASS PRO mark and Complainant’s website. Therefore, Respondent registered and uses the <bassprofishing.net> domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes 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).
Lastly, Respondent had at least constructive knowledge of Complainant’s rights in the BASS PRO mark prior to registering and using the <bassprofishing.net> domain name. Complainant’s USPTO trademark registration for its mark far predates Respondent’s registration of the <bassprofishing.net> domain Respondent’s actual knowledge of Complainant’s rights is demonstrated by Respondent’s use of the confusingly similar disputed domain name to display links to Complainant’s competitors. Some panels have found that constructive notice is not alone enough to constitute a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, this Panel finds that Respondent had actual knowledge of Complainant’s rights in the BASS PRO mark when Respondent registered the <bassprofishing.net> domain name and that Respondent registered and uses the <bassprofishing.net> domain name in bad faith under Policy ¶ 4(a)(iii). See 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).
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 <bassprofishing.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 17, 2012
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