The Finish Line, Inc. and its subsidiary Spike's Holdings, Inc. v. Mayni Efrem / ME New Enterprise
Claim Number: FA1212001474709
Complainant is The Finish Line, Inc. and its subsidiary Spike's Holdings, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Mayni Efrem / ME New Enterprise (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finishline.co>, registered with ENOM, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-cally on December 6, 2012; the National Arbitration Forum received payment on December 6, 2012.
On December 7, 2012, ENOM, INC. confirmed by e-mail to the National Arbitra-tion Forum that the <finishline.co> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the names. 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 accord-ance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 13, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of January 2, 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, adminis-trative, and billing contacts, and to postmaster@finishline.co. Also on December 13, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant consists of Finish Line, Inc., and its subsidiary, Spike’s Holdings, Inc., which together specialize in the marketing of athletic footwear and active apparel and accessories.
Complainant uses the FINISH LINE mark in operation of online retail store ser-vices featuring men’s, women’s, and children’s active wear, footwear, head wear, sporting goods and sporting goods-related accessories.
Complainant holds trademark registrations, on file with the United States Patent and Trademark Office (“USPTO”) for the FINISH LINE mark (including Reg. No. 1,772,105, registered May 18, 1993).
Respondent registered the disputed domain name on July 20, 2010.
Respondent’s <finishline.co> domain name is identical to Complainant’s FINISH LINE mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant’s mark in a domain name.
Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business.
Respondent presumably uses the disputed domain name to generate revenue at its “click-through” website.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent is a serial cyber-squatter.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent has registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two identified Complainants, Finish Line, Inc. and Spike’s Holdings, Inc. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supple-mental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or en-tity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
It is undisputed in the record that Spike’s Holdings, Inc. is a subsidiary of Finish Line, Inc., and that together they specialize in the marketing of athletic footwear and active apparel and accessories. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. See, for example, Vancouver Organizing Comm. for the 2010 Olym-pic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel there concluding that:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a part-nership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
On the record before us, we are satisfied that Finish Line, Inc. and Spike’s Hold-ings, Inc. have presented undisputed evidence of a sufficient link between them to justify their treatment as a single complainant in this proceeding. Accordingly, the two enterprises will be described throughout this decision collectively as a single “Complainant.”
Complainant has rights in its FINISH LINE service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demon-strates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here India). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that Policy ¶ 4(a)(i) does not require that a mark be registered in the country in which a re-spondent operates, it being sufficient that a complainant can demonstrate rights in its mark from registration in some jurisdiction).
Turning to the central question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <finishline.co> domain name is substant-ively identical to Complainant’s FINISH LINE mark. The domain name contains the entire mark, merely eliminating the space between the terms of the mark and adding the country-code top-level domain (“ccTLD”) “.co”. These alterations of the mark do not distinguish the domain name from the mark under the standards of the Policy. See Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that, even with the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”). See also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding the domain name <croatiaairlines.com> identical to a complainant's CROATIA AIRLINES trademark). These results are necessary because spaces are not permitted in a domain name and because every domain name requires a top-level domain.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respon-dent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that Respondent is not sponsored by or affiliated with Complainant in any way, and that Complainant has not given Respondent permission to use Complain-ant’s FINISH LINE mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Mayni Efrem / ME New Enterprise,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in that domain name as described in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the rele-vant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain name to redirect unsuspecting Inter-net users to a website featuring links to third-party websites, some of which com-pete with Complainant’s business, and that Respondent presumably receives pay-per-click fees from the operation of these linked websites. This use of the 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because a UDRP “[r]espondent’s disputed domain names resolve to a web-site featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [a com-plainant’s] mark,” the respondent was not using the disputed domain names for either a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are convinced from the evidence that Respondent is, as alleged in the Com-plaint, a serial cyber-squatter, having been involved in numerous UDRP pro-ceedings resulting in findings of bad faith registration and use of domain names. See, for example: Academy, Ltd. d/b/a Academy Sports & Outdoors v. Mayni Efrem / ME New Enterprise, FA 1456279 (Nat. Arb. Forum Aug. 27, 2012); AccountNow, Inc. v. ME New Enterprise / Mayni EfremI, FA 1417493 (Nat. Arb. Forum (Nat. Arb. Forum Jan. 17, 2012); Back-country.com Inc. v. ME New Enterprise / Mayni Efrem, FA 1375452 (Nat. Arb. Forum Apr. 8, 2011). This pattern of bad faith registration and use of domain names established in other proceedings stands as evidence under Policy ¶ 4(b)(ii) that Respondent’s registration and use of the contested domain name in the instant proceeding is likewise in bad faith. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where a respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of disputed domain names appropriating the trademarks of various UDRP complainants).
Similarly, we are persuaded from the record that Respondent’s employment of the <finishline.co> domain name, which is substantively identical to Complain-ant’s FINISH LINE service mark, to divert Internet users to a pay-per-click web-site featuring links to third-party websites offering products in competition with the business of Complainant disrupts Complainant’s business. This is evidence that Respondent’s registration and use of the domain name is in bad faith as described in Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <finishline.co> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 24, 2013
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