Finish Line, Inc. and its subsidiary Spike's Holdings, Inc. v. Land Merchandising Corporation
Claim Number: FA1301001482470
Complainant is Finish Line, Inc. and its subsidiary Spike's Holdings, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Land Merchandising Corporation (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finnishline.com>, registered with GoDaddy, LLC.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2013; the National Arbitration Forum received payment on January 29, 2013.
On January 29, 2013, GoDaddy, LLC confirmed by e-mail to the National Arbitration Forum that the <finnishline.com> domain name is registered with GoDaddy, LLC and that Respondent is the current registrant of the name. GoDaddy, LLC has verified that Respondent is bound by the GoDaddy, LLC 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 January 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 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@finnishline.com. Also on January 30, 2013, 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 Februar 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s rights in the mark and the confusing similarity of the domain name.
· Complainant has rights in the FINISH LINE mark by virtue of its United States Patent & Trademark Office (“USPTO”) registrations for the mark. See Reg. No. 1,772,105 registered on May 18, 1993; Reg. No. 1,872,539 Jan. 10, 1995; Reg. No. 1,960,883 Mar. 5, 1996; Reg. No. 3,111,990 registered on July 4, 2006.
· Respondent registered the <finnishline.com> domain name no earlier than September 28, 1997.
· Respondent’s <finnishline.com> domain name is confusingly similar to Complainant’s FINISH LINE mark. The addition of the generic top-level domain (“gTLD”) “.com” does nothing to distinguish the domain name from the mark. Respondent merely added a single additional character to the FINISH LINE mark in creating its domain name.
Policy ¶ 4(a)(ii): Respondent lacks rights and legitimate interests in the domain name.
Policy ¶ 4(a)(iii): Respondent registered and used the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Finish Line, Inc. and its subsidiary Spike's Holdings, Inc., uses the FINISH LINE marks in connection with the sale of footwear and related apparel.
Complainant has rights in the FINISH LINE mark by virtue of its United States Patent & Trademark Office (“USPTO”) registrations for the mark. See Reg. No. 1,772,105 registered on May 18, 1993; Reg. No. 1,872,539 Jan. 10, 1995; Reg. No. 1,960,883 Mar. 5, 1996; Reg. No. 3,111,990 registered on July 4, 2006.
Respondent, Land Merchandising Corporation, registered the <finnishline.com> domain name no earlier than September 28, 1997. The domain name redirects Internet users to a website featuring generic links to third-party websites, including websites hosted by Complainant’s competitors.
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.”).
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Finish Line, Incorporated, and Spike’s Holding, Incorporated. Complainant asserts that Spike’s Holding, Inc., is a subsidiary to Finish Line, Inc. Complainant alleges that the two entities have continuously used the FINISH LINE family of marks together since 1982.
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 Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity 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.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006)(“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 partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”). As the evidence is sufficient to establish a sufficient nexus or link between the Complainants, the Panel shall treat them all as a single entity in this proceeding. Nonetheless, throughout the rest of the Decision, the Complainants will be collectively referred to as “Complainant.”
Complainant has rights in the FINISH LINE mark under Policy ¶ 4(a)(i) by virtue of its USPTO registrations for the mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that Respondent’s <finnishline.com> domain name is confusingly similar to Complainant’s FINISH LINE mark. Respondent deleted the spacing from the mark, added the gTLD “.com,” and added an additional letter “n” to the mark in forming the disputed domain name. The spacing and gTLD alterations are irrelevant to this analysis because a gTLD is a mandatory component of a domain name and spacing is not allowed. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Respondent failed to provide a distinction between its domain name and the mark by merely adding the letter “n” to the registered FINISH LINE mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <finnishline.com> domain name is confusingly similar to Complainant’s FINISH LINE mark under Policy ¶ 4(a)(i).
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).
Complainant argues that Respondent is not commonly known by the <finnishline.com> domain name. Complainant declares that it has not permitted, sponsored, or become affiliated with Respondent’s use of the FINISH LINE mark in the domain name. Complainant claims that the WHOIS information does not indicate whether Respondent is known by the domain name. The WHOIS information references both a “Land Merchandising Corporation” and one “John Bonk” in regards to the <finnishline.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) because there is nothing in the record indicating that Respondent has ever gone by “finnishline.com.” See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant contends that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The domain name redirects Internet users to a website featuring generic links to third-party websites, including websites hosted by Complainant’s competitors. The Panel assumes that Respondent prospers through this endeavor in the form of click-through revenue. The Panel finds that Respondent has failed to make a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name because Respondent is merely using the domain name to promote hyperlinks to competing products. 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)).
Complainant further argues that Respondent’s <finnishline.com> domain name is a classic example of typosquatting. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). The Panel concludes that the addition of an extra letter “n” to the domain name is typosquatting, illustrating that Respondent has neither rights nor legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in an ongoing pattern of recalcitrant, serial cybersquatting. Complainant alleges that Respondent has been ordered to transfer numerous domains under prior UDRP decisions. See Memorial Sloan-Kettering Cancer Center v. a/k/a John Bonk, FA 1323580 (Nat. Arb. Forum June 24, 2010); Comair Ltd. v. John Bonk, D2009–0094 (WIPO Mar. 18, 2009); Ticketmaster v. John Bonk, D2008–1491 (WIPO Nov. 25, 2008). Additionally, Complainant notes that Respondent is holding onto the registrations of other domain names that appear to be straightforward examples of typosquatting. The Panel notes that while Respondent’s WHOIS information contains “John Bonk” as an administrative contact, “John Bonk” is not the named Respondent in this proceeding. Previous panels have found that a respondent’s bad faith use and registration can be inferred from a history of bad faith use and registration evidenced by prior UDRP decisions. See Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”). The Panel concludes that Respondent’s bad faith use and registration of this disputed domain name can be inferred from the prior UDRP decisions ordering transfers pursuant to Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s hosting of click-through advertisements that compete with Complainant illustrates an attempt to disrupt Complainant’s business. Complainant argues that the links on the disputed domain name divert potential customers away from Complainant’s products to other third-party websites. Previous panels have found that hosting competing hyperlinks can constitute bad faith use and registration when the respondent does so for purposes of disrupting a complainant’s business. 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 finds that Respondent registered and is using the <finnishline.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by creating a disruption of Complainant’s business.
Complainant contends that Respondent is seeking to confuse Internet users into believing Complainant is affiliated with the websites in order to secure Respondent’s own financial gain. Complainant alleges that each time Internet users mistakenly click on the links on the website, they are redirected to another website, while Respondent in turn acquires advertisement revenue. The domain name resolves to a website that solicits competing products. The Panel finds that Respondent’s use and registration is in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant argues that Respondent’s typosquatting behavior is evidence of bad faith use and registration of the domain name. Previous panels have based a finding of bad faith use and registration on a respondent’s decision to misspell a famous or registered mark and register this common misspelling in a domain name. 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).”). The Panel concludes that Respondent’s typosquatting is evidence of bad faith use and registration under Policy ¶ 4(a)(iii).
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 <finnishline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 27, 2013
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