The Finish Line, Inc. And Its Subsidiary Spike's Holdings, Inc. v. Above.com Domain Privacy
Claim Number: FA1212001474706
Complainant is The Finish Line, Inc. And Its Subsidiary Spike's Holdings, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, US. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> registered with ABOVE.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2012; the National Arbitration Forum received payment on December 6, 2012.
On December 9, 2012, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.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 December 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2013 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@finfshline.com, postmaster@finiskline.com, postmaster@finislline.com, postmaster@fionishline.com, postmaster@finlishline.com, postmaster@finlshline.com, and postmaster@linishline.com. Also on December 14, 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 January 10, 1013, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names, the domain names at issue, are confusingly similar to Complainant’s FINISH LINE mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a retailer of athletic shoes, apparel and accessories and owns the FINISH LINE mark and several trademark registrations with the United States Patent and trademark Office (“USPTO”) for the mark as follows:
Reg. No. 1,772,105 registered May 18, 1993;
Reg. No. 1,872,538 registered Jan. 10, 1995 and
Reg. No. 1,960,883 registered March 5, 1996; and
Reg. No. 3,111,990 registered July 4, 2006.
Respondent’s <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names are confusingly similar to Complainant’s FINISH LINE mark and are typosquatted versions of Complainant’s FINISH LINE mark.
Respondent is not commonly known by the <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, or <linishline.com> domain names, and Complainant has not given Respondent permission to use its FINISH LINE mark.
Respondent uses the <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which compete directly with Complainant’s business. Presumably, Respondent receives pay-per-click fees from the links featured on Respondent’s website. The earliest date on which Respondent registered the <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names was February 14, 2008, which is after Complainant began using the FINISH LINE mark in commerce, which was on December 31, 1981. Respondent’s use of the disputed domain names creates a wrongful competitive advantage and commercial gain. Respondent is promoting products that compete with Complainant on the websites resolving from its disputed domain names. Complainant’s FINISH LINE mark is spelled correctly on Respondent’s resolving websites. Respondent uses falsified WHOIS contact information.
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 uses the FINISH LINE mark on clothing it sells extensively and owns registrations for the FINISH LINE mark with the USPTO for the mark as follows:
Reg. No. 1,772,105 registered May 18, 1993;
Reg. No. 1,872,538 registered Jan. 10, 1995 and
Reg. No. 1,960,883 registered March 5, 1996; and
Reg. No. 3,111,990 registered July 4, 2006.
Evidence of a registration for a given mark with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). To establish rights in a mark, a complainant need not register the mark in the country in which the respondent resides or operates. See 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). Based on the evidence Complainant has presented, the Panel finds that Complainant owns rights in the FINISH LINE mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names are confusingly similar to Complainant’s FINISH LINE mark and are classic examples of typosquatting and either add a character, remove a character, include an incorrect character, or misspell Complainant’s mark. The Panel notes that <finfshline.com>, <finiskline.com>, <finislline.com>, <finlshline.com>, and <linishline.com> domain names are all misspelled versions of Complainant’s FINISH LINE mark. The <fionishline.com>, and <finlishline.com> domain names add an additional letter to Complainant’s FINISH LINE mark. Further, the relevant comparison between the disputed domain names and Complainant’s mark is the second-level portion of the disputed domain names; the generic top-level domain “.com” does not affect the domain for determining similarity. Lastly, the disputed domain names all remove the space from between the terms of the mark. These variations are insufficient to distinguish a disputed domain name from a given mark. 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)); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Therefore, Respondent’s <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names are confusingly similar to Complainant’s FINISH LINE mark.
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 names 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 commonly known by the <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names. The WHOIS information for Respondent lists, “Above.com Domain Privacy” as the registrant of the domains. Respondent is not sponsored by or legitimately affiliated with Complainant in any way, as Complainant has not given permission to Respondent to use Complainant’s FINISH LINE mark. A respondent is not commonly known by a disputed domain name when there is no evidence in the WHOIS information or other evidence suggesting a relationship to the trademark owner and when a complainant has not authorized a respondent to use its mark. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) due to Respondent’s failure to present any evidence and Complainant’s allegations to the contrary.
Respondent has no rights or legitimate interests in the <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names as it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use in connection with the disputed domain names. Respondent is using the disputed domain names to redirect unsuspecting Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Presumably, Respondent is receiving pay-per-click fees from the links featured on Respondent’s resolving websites. The <finfshline.com> domain name resolves to a page featuring links including, “Nike Official Store,” “NORDSTROM-Official Site,” “Buy Nike Air Shoes,” “ Nike Air Extreme Shoes,” and “adidas Official Store.” The <finiskline.com> domain name resolves to a webpage featuring the links, “Under Armour,” “Finish Line Coupons,” “Coupons For Footaction,” and “Finish Line Free Shipping.” The website resolving from the <finislline.com> domain name features links such as, “ADIDAS OFFICIAL STORE,” “MIZUNO RUNNING SHOES,” “MENS TENNIS SHOE LACOSTE,” and “ASICS GEL RUNNING SHOES.” The <finlishline.com> domain names resolves to a page featuring links such as, “Finish Line,” “Bass Shoes Outlet Stores,” and “Famous Footwear Shoes.” The <finlshline.com> domain name resolves to a website featuring the links, “Finish Line Coupons,” “Nike Mens Tennis Shoes,” and “Lacoste Tennis Shoes.” The <fionishline.com> domain name resolves to a page featuring the link, “Finish Line Shoes.” Finally, the Panel notes that the <linishline.com> domain name features links like, “Finish Line Coupons,” “Asics Gel Running Shoes,” “Finishline,” and “Nikeshock.” Using a confusingly similar domain name to resolve to a website featuring pay-per-click links that directly compete with a complainant’s business does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use interest under Policies ¶¶ 4(c)(i) or (iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent has no rights or legitimate interests in the <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policies ¶¶ 4(c)(i) or (iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names resolve to websites featuring pay-per-click links promoting products that compete with Complainant. Complainant argues that these links divert potential customers away from Complainant’s business and to the featured third-party websites, thereby disrupting Complainant’s business. A respondent’s effort to divert consumers and disrupt a complainant’s business through the use of confusingly similar domain names is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel accordingly finds that Respondent registered and uses the <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent’s typosquatting behavior is evidence of bad faith in and of itself. Using a disputed domain name that is confusingly similar to a complainant’s mark is typosquatting and therefore bad faith use and registration. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Accordingly, Respondent’s use of the <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names is typosquatting and therefore, bad faith use and registration.
Respondent had actual and/or constructive knowledge of Complainant's rights in the FINISH LINE mark. Respondent's use of the disputed domain names to feature Complainant's mark spelled correctly on associated websites, as well as feature links to competing products and businesses at the resolving websites indicates that Respondent had actual knowledge of Complainant's mark and rights. Although some panels have not regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore, it determines that Respondent 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 Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's 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 <finfshline.com>, <finiskline.com>, <finislline.com>, <fionishline.com>, <finlishline.com>, <finlshline.com>, and <linishline.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 17, 2013
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