national arbitration forum

 

DECISION

 

Texas A&M University v. lai hai

Claim Number: FA1302001484059

PARTIES

Complainant is Texas A&M University (“Complainant”), represented by John C. Cain of Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P., Texas, USA.  Respondent is lai hai (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <12thmanjersey.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2013; the National Arbitration Forum received payment on February 7, 2013.

 

On February 7, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <12thmanjersey.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name.  PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 February 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 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@12thmanjersey.com.  Also on February 12, 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 March 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.            Since at least as early as 1983, Complainant has offered quality athletic clothing and products and services under the marks 12TH MAN and HOME OF THE 12TH MAN (collectively the “12TH MAN Mark” or “Complainant’s Mark”).  The 12TH MAN Mark has been extensively advertised and Complainant has expended considerable effort and millions of dollars in offering quality products and services under the 12TH MAN Mark.  As a result of such efforts, and as a result of the long use by Complainant of the 12TH MAN Mark, the 12TH MAN Mark is recognized as a designation that identifies and distinguishes the quality athletic products and services offered by Complainant.  Moreover, Complainant has developed substantial goodwill in the 12TH MAN Mark for its athletic products and services.

 

2.            In addition to Complainant’s common law rights, and consistent with its long use of the 12TH MAN Mark, Complainant has obtained the following U.S. Trademark Registrations and/or has filed the following applications for the mark 12TH MAN and other marks incorporating 12TH MAN:

 

 

 

3.            The domain name that is in dispute in this proceeding, 12thmanjersey.com (the “Disputed Domain Name”), is identical or confusingly similar to Complainant’s Mark.  See  ICANN Policy ¶4(a)(i);  ICANN Rule 3(b)(ix)(1).  The Disputed Domain Name consists solely of Complainant’s Mark with the addition of only a generic word “jersey,” which describes both some of the goods offered under Complainant’s Mark as well as the goods offered at Respondent’s website.  As such, the Disputed Domain Name is likely to cause confusion among consumers as to source, sponsorship, or affiliation.  See ICANN Policy ¶4.a.(i), See also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶4(a)(i)); Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the westfieldshopping.com domain name confusingly similar because the WESTFIELD mark was the dominant element).

 

4.            Respondent has no rights or legitimate interests in the Disputed Domain Name.  See ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).

 

a.    There is no question as to priority.  Complainant’s 12TH MAN Mark has been used since at least as early as 1922 and has been registered in the U.S. since at least as early as September 4, 1990.  Upon information and belief, Respondent registered the Disputed Domain Name no earlier than November 1, 2012.  Upon information and belief, Respondent is the owner of 26 other domain names, all of which were registered in 2012 and a number of which consist of the name of a famous athlete combined with the generic word “jersey”.  Upon information and belief, Respondent has not otherwise used the mark 12TH MAN and therefore has no established prior rights.

 

b.    Upon information and belief, Respondent is not commonly known by the names “12TH MAN” or “12TH MAN JERSEY.”  Upon information and belief, Respondent operates no other business or organization under the name “12TH MAN” or “12TH MAN JERSEY.”  See ICANN Policy at ¶4(c)(ii); Gallup, Inc. v. Amish Country Store, FA 96209 (NAF Jan. 23, 2001) (finding that Respondent has no rights in a domain name when Respondent is not known by the mark); RMO, Inc. v. Burbridge, FA 96949 (NAF May 16, 2001) (interpreting ICANN Policy ¶4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).

 

c.    Respondent has not been authorized or licensed to use Complainant’s Mark or sell its goods or services using Complainant’s Mark.  However, the goods offered on Respondent’s website compete directly with goods covered by Complainant’s registrations.  Such use of the Disputed Domain Name does not constitute a bona fide offering of goods or services pursuant to ICANN Policy ¶4(c)(i).  Furthermore, Respondent’s attempt to capitalize on the goodwill associated with Complainant’s Mark evidences the fact that Respondent is not making a legitimate noncommercial or fair use of the domain name.  See ICANN Policy at ¶4(c)(iii).

 

5.            Respondent registered and is using the Disputed Domain Name in bad faith.  See ICANN Policy at ¶4(a)(iii).

 

a.    Complainant’s federal trademark registrations provided Respondent with constructive notice of Complainant’s Mark.  Furthermore, Complainant’s 12TH MAN Mark is extensively advertised and well-known not only in its market area but also to the general public.  Respondent’s actual or constructive knowledge of Complainant’s Mark prior to registration of the Disputed Domain Name indicates bad faith.  See Digi Int’l v. DDI Sys., FA 124506 (NAF Oct. 24, 2002).  

 

b.    Upon information and belief, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s Website by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s Website, and to divert users from Complainant’s websites to its own. See ICANN Policy ¶4(b)(iv).  Respondent is thus trading on the goodwill associated with Complainant’s Mark and creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Respondent’s Website with Complainant’s Mark.  See ICANN Policy ¶4(b)(iv); Rock Fin., A Quicken Loans Co. v. Henry Chan, FA167917 (NAF Aug. 15, 2003) (and cases cited therein). 

 

c.    Respondent is not authorized by Complainant to market products or services bearing Complainant’s Mark or to make any other use of Complainant’s Mark.  The disputed domain name disrupts Complainant’s business, which is an indication of bad faith registration and use.  See ICANN Policy ¶4(b)(iii); Move Collective LLC v. Ingenious Solutions ltd Ingenious Solutions ltd, FA1434827 (NAF, May 11, 2012) citing Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 Complainant to prove three elements to obtain an order transferring or canceling a domain name:

 

(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.”).

 

Identical and/or Confusingly Similar

Complainant Texas A&M University contends it owns the 12^TH MAN trademark, whose products and services include clothing items such as t-shirts, athletic uniforms, and entertainment services, namely conducting, organizing and promoting sporting events featuring football, soccer, baseball, softball, basketball, swimming, diving, equestrian, and tennis. Complainant is the owner of trademark registrations with the United States Patent & trademark Office (“USPTO”) for the 12^TH MAN mark (e.g., Reg. No. 1,612,053, registered September 4, 1990).  Although Respondent appears to reside in China, Policy ¶4(a)(i) does not require Complainant’s mark to be registered in Respondent’s country.  It is sufficient Complainant can demonstrate rights in a mark somewhere (not anywhere in particular). Complainant has done just that. Complainant’s registration of the 12^TH MAN mark with the USPTO sufficiently shows its rights in the mark under 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)).

 

Complainant claims Respondent’s <12thmanjersey.com> domain name is identical or confusingly similar to Complainant’s 12^TH MAN mark because the disputed domain name consists solely of Complainant’s mark solely with the addition of the related generic word “jersey.” Complainant argues adding the word “jersey” merely describes some of the goods offered under Complainant’s mark. Adding a related generic word does not adequately distinguish a disputed a domain name from Complainant’s mark under Policy ¶4(a)(i). See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). Adding the generic top-level domain (“gTLD”) “.com” to the <12thmanjersey.com> domain name does not adequately distinguish the disputed domain name from Complainant’s mark. Prior panels held the addition of a gTLD is insufficient to differentiate a disputed domain name from a mark and so has this Panel. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007). Respondent’s <12thmanjersey.com> domain name is identical or confusingly similar to Complainant’s 12^TH MAN mark under Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has 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.”).

 

Complainant claims Respondent is not commonly known by the names 12^TH MAN or 12^TH MAN JERSEY.  The WHOIS information for the disputed domain name lists “lai hai” as the registrant. It seems pretty clear from Respondent’s WHOIS registration that Respondent isn’t known by the disputed domain name.  Therefore, the Panel holds Respondent is not commonly known by the <12thmanjersey.com> domain name under Policy ¶4(c)(ii).

 

Complainant claims the goods offered on Respondent’s website directly compete with Complainant’s goods. Respondent’s <12thmanjersey.com> domain name is used to sell athletic jerseys based upon the snapshots submitted by Complainant (although it would have been nice if Complainant had placed footers on the printouts to confirm what web site they were taken from). The Panel finds Respondent’s use of the disputed domain name to sell products directly competing with Complainant’s products does not constitute a bona fide offering of goods and services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).

 

The Panel finds Policy ¶4(a)(ii) satisfied. 

 

Registration and Use in Bad Faith

Complainant claims Respondent’s disputed domain name disrupts Complainant’s business. Complainant claims Respondent is not authorized by Complainant to market products or services bearing Complainant’s mark or to make any other use of Complainant’s mark. The Panel notes Respondent is using the disputed domain name to sell presumably counterfeit athletic jerseys bearing the 12^TH MAN mark. The Panel in DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) determined a respondent appropriating complainant’s mark to divert complainant’s customers to respondent’s competing business disputed complainant’s businesses. This Panel finds Respondent’s actions disrupt Complainant’s business, as it contends, evidencing bad faith under Policy ¶4(b)(iii).

 

Complainant claims Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark. Respondent is using the disputed domain name to sell athletic jerseys by using Complainant’s 12^TH MAN mark. Complainant claims Respondent is trading on the Complainant’s goodwill. The Panel finds Respondent is attempting to redirect users for its own commercial gain, showing bad faith use and registration under Policy ¶4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).

 

Complainant argues its 12^TH MAN mark is extensively advertised and well-known, not only in its market area, but also to the general public.  Considering Respondent is using Complainant’s mark as Complainant does, it appears Respondent must have actually known about Complainant’s mark.  This Panel finds Respondent had actual knowledge of the mark and Complainant's rights. Respondent registered the disputed 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 Policy ¶4(a)(iii) satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <12thmanjersey.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Friday, March 22, 2013