national arbitration forum

 

DECISION

 

Under Armour, Inc. v. PPA Media Services / Ryan G Foo

Claim Number: FA1306001507330

PARTIES

Complainant is Under Armour, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, United States.  Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <kidsunderarmour.com>, <uderarmour.com>, <underaemour.com>, <underamour.com>, <underamrmour.com>, <underarmar.com>, <underarmaur.com>, <underarmoer.com>, <underarmourshoes.com>, <underarmourteam.com>, <underaumour.com>, <undersarmour.com>, and <undersrmour.com>, registered with Internet.Bs Corp.

 

PANEL

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

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2013; the National Arbitration Forum received payment on June 27, 2013.

 

On July 7, 2013, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <kidsunderarmour.com>, <uderarmour.com>, <underaemour.com>, <underamour.com>, <underamrmour.com>, <underarmar.com>, <underarmaur.com>, <underarmoer.com>, <underarmourshoes.com>, <underarmourteam.com>, <underaumour.com>, <undersarmour.com>, and <undersrmour.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names.  Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 July 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@kidsunderarmour.com, postmaster@uderarmour.com, postmaster@underaemour.com, postmaster@underamour.com, postmaster@underamrmour.com, postmaster@underarmar.com, postmaster@underarmaur.com, postmaster@underarmoer.com, postmaster@underarmourshoes.com, postmaster@underarmourteam.com, postmaster@underaumour.com, postmaster@undersarmour.com, postmaster@undersrmour.com.  Also on July 17, 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 August 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <kidsunderarmour.com>, <uderarmour.com>, <underaemour.com>, <underamour.com>, <underamrmour.com>, <underarmar.com>, <underarmaur.com>, <underarmoer.com>, <underarmourshoes.com>, <underarmourteam.com>, <underaumour.com>, <undersarmour.com>, and <undersrmour.com> domain names are confusingly similar to Complainant’s UNDER ARMOUR mark.

 

2.    Respondent does not have any rights or legitimate interests in the <kidsunderarmour.com>, <uderarmour.com>, <underaemour.com>, <underamour.com>, <underamrmour.com>, <underarmar.com>, <underarmaur.com>, <underarmoer.com>, <underarmourshoes.com>, <underarmourteam.com>, <underaumour.com>, <undersarmour.com>, and <undersrmour.com> domain names.

 

3.    Respondent registered and used the <kidsunderarmour.com>, <uderarmour.com>, <underaemour.com>, <underamour.com>, <underamrmour.com>, <underarmar.com>, <underarmaur.com>, <underarmoer.com>, <underarmourshoes.com>, <underarmourteam.com>, <underaumour.com>, <undersarmour.com>, and <undersrmour.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns rights in its UNDER ARMOUR mark through various registrations with the United States Patent and Trademark Office (“USPTO”), (e.g., Reg. No 2,279,668, Registered September 21, 1999) and with the Chilean trademark authority (e.g., Reg. No. 797,090, Registered September 21, 2007), as well as authorities in other countries.  Complainant uses the mark to provide sporting and related apparel.

 

Respondent registered the disputed domain names on the following dates:

 

<kidsunderarmour.com> on February 7, 2006;

<uderarmour.com> on September 20, 2004;

<underaemour.com> on September 1, 2005;

<underamour.com> on August 7, 2002;

<underamrmour.com> on August 13, 2006;

<underarmar.com> on September 15, 2004;

<underarmaur.com> on September 15, 2006;

<underarmoer.com> on October 25, 2007;

<underarmourshoes.com> on July 28, 2008;

<underarmourteam.com> on August 12, 2006;

<underaumour.com> on December 3, 2005;

<undersarmour.com> on October 12, 2006; and

 <undersrmour.com> on January 19, 2005.

 

Respondent uses the above disputed domain names to resolve to websites featuring hyperlinks to third-party websites, some of which directly compete with Complainant’s business.

 

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 Panel notes that Complainant’s Chilean registration does not predate Respondent’s registration of the disputed domain names, but Complainant’s USPTO registration does predate Respondent’s registration of the disputed domain names.  Previous panels have agreed that complainants can establish rights in their marks for Policy ¶ 4(a)(i) purposes through registration in any jurisdiction, not necessarily the jurisdiction in which Respondent operates.  See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), where the panel held that the complainant had established rights in its mark through registration with several trademark authorities around the world, including the USPTO.  Thus, the Panel finds that Complainant has sufficiently established its rights in its UNDER ARMOUR mark pursuant to Policy ¶ 4(a)(i) through its trademark registration with the USPTO. 

 

Respondent’s  <kidsunderarmour.com>, <uderarmour.com>, <underaemour.com>, <underamour.com>, <underamrmour.com>, <underarmar.com>, <underarmaur.com>, <underarmoer.com>, <underarmourshoes.com>, <underarmourteam.com>, <underaumour.com>, <undersarmour.com>, and <undersrmour.com> domain names are confusingly similar to Complainant’s UNDER ARMOUR mark, as they merely misspell Complainant’s mark.

Previous panels have held that domain names that merely remove or replace one character from a mark, or otherwise purposely misspell a mark, are confusingly similar to the at-issue mark.  See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) decision, where a previous panel held that a domain name that differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive; see also Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling).

 

The disputed domain names also delete the space contained in Complainant’s UNDER ARMOUR mark and add the general top-level domain name (“gTLD”) “.com.”  These changes are irrelevant in a confusing similarity analysis under Policy ¶ 4(a)(i).  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)).  The Panel finds that Respondent’s <uderarmour.com>, <underaemour.com>, <underamour.com>, <underamrmour.com>, <underarmar.com>, <underarmaur.com>, <underarmoer.com>, <underaumour.com>, <undersarmour.com>, and <undersrmour.com> domain names are confusingly similar to Complainant’s UNDER ARMOUR mark pursuant to Policy ¶ 4(a)(i).

 

Respondent’s <kidsunderarmour.com>, <underarmourshoes.com>, and <underarmourteam.com> domain names fully incorporate Complainant’s UNDER ARMOUR mark and add the generic terms “kids,” “shoes,” and “team.”  Previous panels have held that confusing similarity is established under Policy ¶ 4(a)(i) when a disputed domain name fully incorporates complainant’s mark and merely adds a generic word or term.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).  Thus, the Panel finds that Respondent’s <kidsunderarmour.com>, <underarmourshoes.com>, and <underarmourteam.com> domain names are confusingly similar to Complainant’s UNDER ARMOUR mark.

 

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

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).

 

Complainant asserts that Respondent is not commonly known by the disputed domain names.  The WHOIS information identifies the registrant of the disputed domain names as “PPA Media Services/ Ryan G Foo.”  Complainant asserts that it has no relationship with Respondent and has not authorized Respondent’s use of domain names that are confusingly similar to Complainant’s UNDER ARMOUR mark.  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), where the panel concluded that the respondent was not commonly known by the disputed 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; see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), a previous panel held that that the respondent failed to establish rights and legitimate interests in the disputed domain name where the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name.  The Panel similarly finds that Respondent is not commonly known by the disputed domain names pursuant to Policy  ¶ 4(c)(ii).

 

Complainant further alleges that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), because Respondent is using the disputed domain names to divert internet users to websites featuring unrelated and related hyperlinks to third-party websites, some of which directly compete with Complainant’s business.  Complainant submits evidence of Respondent’s websites resolving from the disputed domain names with hyperlinks that advertise competing and related goods such as Adidas clothing, Cabela’s hunting clothes, and Ex Officio underwear.  Respondent presumably receives pay-per-click fees from these links.  Previous panels have found that a respondent’s use of a domain name to redirect Internet users to third-party websites is not a protected use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii).  See, e.g., Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).  Thus, the Panel finds that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

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

 

 

 

Registration and Use in Bad Faith

 

Complainant provides evidence that Respondent offered the <uderarmour.com>, <underamour.com>, and <underarmourshoes.com> domain names for sale to the public.  The Panel finds that this shows bad faith under Policy ¶ 4(b)(i).  See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000), (finding “[t]here is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), where the panel stated that the respondent's “general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”

 

Complainant further alleges that Respondent’s bad faith under Policy ¶ 4(a)(iii) is evidenced by Respondent’s pattern of bad faith registration, citing three prior UDRP decisions in which a domain name registered by Respondent “PPA Media Services / Ryan G Foo” was ordered to be transferred.  The Panel also notes that, in the instant case alone, Respondent has registered thirteen domain names that incorporate Complainant’s UNDER ARMOUR mark.  Previous panels have found that prior UDRP proceedings against a respondent are sufficient to find a pattern of bad faith registration indicating present bad faith under Policy ¶ 4(b)(ii).  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 the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005), where the panel held that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii).  Thus, the Panel finds that Respondent has demonstrated bad faith through a pattern of bad faith registration under Policy ¶ 4(b)(ii).

 

Respondent’s registered and uses the disputed domain names to disrupt Complainant’s business by redirecting Internet users to links to Complainant’s competitors, constituting bad faith.  Prior panels have similarly held that the display of such competing hyperlinks constitutes bad faith under Policy ¶ 4(b)(iii).  See, e.g., 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).”)

 

Respondent’s use of the disputed domain names takes advantage of Complainant’s well-known UNDER ARMOUR mark to divert Internet users to websites that promote hyperlinks to websites of third-party competitors, presumably for click-through fees, which is bad faith under Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), where the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes; see also 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 had actual knowledge of Complainant’s rights in the UNDER ARMOUR mark when it registered the disputed domain names, noting the worldwide notoriety of Complainant’s UNDER ARMOUR mark, and the common misspellings of that mark.  The Panel notes that a respondent’s actual knowledge of a complainant’s ownership of a mark can be inferred by the facts, and that such an inference is typically found to support a finding of bad faith under Policy  ¶ 4(a)(iii).  See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well.  Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed.  Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark.  Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).  Accordingly, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark, additional evidence of bad faith under Policy ¶ 4(a)(iii).

 

Finally, Respondent has engaged in typosquatting by registering ten domain names that constitute common misspellings of Complainant’s UNDER ARMOUR mark, itself evidence of bad faith under Policy ¶ 4(a)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).  

 

The Panel finds that Complainant has satisfied 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 <kidsunderarmour.com>, <uderarmour.com>, <underaemour.com>, <underamour.com>, <underamrmour.com>, <underarmar.com>, <underarmaur.com>, <underarmoer.com>, <underarmourshoes.com>, <underarmourteam.com>, <underaumour.com>, <undersarmour.com>, and <undersrmour.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  August 24, 2013

 

 

 

 

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