national arbitration forum

DECISION

 

Texas A&M University v. John Trautman

Claim Number: FA1302001486895

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 John Trautman (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <12thmanfangear.com>, registered with GODADDY.COM, LLC.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2013; the National Arbitration Forum received payment on February 25, 2013.

 

On February 26, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <12thmanfangear.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name.  GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 February 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@12thmanfangear.com.  Also on February 27, 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 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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

Complainant contends as follows:

 

Complainant has multiple USPTO trademark registrations for the 12TH MAN mark as well as other registrations worldwide.

 

The <12thmanfangear.com> domain name is identical or confusingly similar to Complainant's Mark.

 

The at-issue domain name consists solely of Complainant's mark with the addition of only the generic words "fan gear," which describes most of the goods offered under Complainant's mark as well as the goods offered at Respondent's website. As such, the at-issue domain name is likely to cause confusion among consumers as to the source, sponsorship, or affiliation of the domain name.

 

Respondent has no rights or legitimate interests in the at-issue domain name.

 

Respondent is not commonly known by the names "12TH MAN" or "12TH MAN FAN GEAR."  Respondent operates no other business or organization under the name "12TH MAN" or "12TH MAN FAN GEAR."

 

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. Moreover, many of the items sold at Respondent's website bear other trademarks owned by Complainant. Such use of the at-issue domain name does not constitute a bona fide offering of goods or services

 

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.

 

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.

 

The disputed domain name disrupts Complainant's business, which is an indication of bad faith registration and use.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has multiple USPTO trademark registrations for the 12TH MAN mark as well as additional registrations worldwide.

 

Respondent is not authorized to use Complainant’s trademark in any capacity.

 

 

Respondent registered the at-issue domain name after Complainant acquired rights in its 12TH MAN mark.

 

Respondent’s <12thmanfangear.com> website is used to market sports devotee merchandise, some of which bears Complainant’s proprietary intellectual property. The merchandise marketed on the at-issue website competes with merchandise that may be offered by Complainant under the 12TH MAN mark.

 

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 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.”).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant demonstrates rights in the 12TH MAN mark by way of its multiple USPTO trademark registrations and additional trademark registrations worldwide. Any one of Complainant’s many trademark registrations is sufficient evidence of rights in a mark under Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

In forming the at-issue domain name Respondent copies the 12TH MAN mark, removes the space, adds the generic term “FANGEAR” and appends the top level domain name “.com” thereto.  However, the resulting differences between the at-issue domain name and Complainant’s12TH MAN trademark fail to materially differentiate the two.  Therefore, the Panel concludes that the <12thmanfangear.com> domain name is confusingly similar to Complainant’s 12TH MAN mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also 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.”). 

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in respect of the at-issue domain name, Complainant’s prima facie showing acts conclusively.

 

WHOIS information for the <12thmanfangear.com> domain name lists the domain name’s registrant as “John Trautman.” Furthermore, the record before the Panel contains no evidence that might otherwise tend to prove that Respondent is nevertheless commonly known by the at-issue domain name despite the contrary WHOIS information. The Panel therefore concludes that Respondent is not commonly known by the <12thmanfangear.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent’s confusingly similar <12thmanfangear.com>  domain name addresses a website that markets various fan related merchandise, some of which contain the proprietary intellectual property of Complainant and some, or all, of which competes with Complainant’s intended use of its 12TH MAN  mark. Using the confusingly similar at-issue domain name in this manner does not constitute a bona fide offering of goods or services pursuant to paragraphs Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a website, which competed with the complainant, was not a bona fide offering of goods or services); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in the disputed domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at‑issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is non-Policy ¶4(b) evidence from which the Panel may likewise conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).

 

Respondent is attempting to generate revenue by confusing Internet users into believing the <12thmanfangear.com> website is sponsored or otherwise affiliated with Complainant. Respondent intends that those Internet users looking for Complainant, via a search engine or otherwise, will be mistakenly motivated by the similarity of the domain name to Complainant’s well-known trademark to navigate to Respondent’s at-issue website. Once there, the accidental visitor is immersed in Respondent’s online fan gear store and in a position to make purchases therefrom.  Respondent’s registration and use of the confusingly similar at-issue domain name in this manner demonstrates bad faith under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Furthermore, this use of the domain name also demonstrates bad faith pursuant to Policy ¶4(a)(iii) in that it is likely to be disruptive to Complainant’s business. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).

 

Finally, Respondent had actual knowledge of Complainant’s rights in the 12TH MAN mark when it registered the <12thmanfangear.com> domain name. Respondent’s prior knowledge of the 12TH MAN mark is inferred from the notoriety of Complainant’s mark, the similarities between the at-issue domain name and Complainant’s mark, as well as from Respondent’s sale of products on the <12thmanfangear.com> website that are like those covered by one or more of Complainant’s 12TH MAN trademark registrations. Registering and using an at-issue domain name with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").

 

DECISION

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

 

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

 

 

Paul M. DeCicco, Panelist

Dated:  April 2, 2013

 

 

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