Under Armour, Inc. v. Jardimar Holdings Corp / Ernesto Charingola
Claim Number: FA1308001514662
Complainant is Under Armour, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Jardimar Holdings Corp / Ernesto Charingola (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <underaarmour.com> and <underarmours.com>, registered with URL Solutions Inc.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2013; the National Arbitration Forum received payment on August 14, 2013.
On August 29, 2013, URL Solutions Inc. confirmed by e-mail to the National Arbitration Forum that the <underaarmour.com> and <underarmours.com> domain names are registered with URL Solutions Inc. and that Respondent is the current registrant of the names. URL Solutions Inc. has verified that Respondent is bound by the URL Solutions Inc. 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 September 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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@underaarmour.com, postmaster@underarmours.com. Also on September 3, 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 September 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions;
1. Complainant is a top provider of performance apparel, footwear, sporting goods, accessories, and related goods and services. Complainant’s business was founded in 1996 and has grown to become one of the most successful and well-known providers of performance apparel in the world. Complainant operates over 100 retail stores and generates significant sales revenue from its official website located at the <underarmour.com> domain name.
2. Complainant owns numerous trademark registrations in the United States and many countries throughout the world for the UNDER ARMOUR mark. One of those marks is trademark Reg. No. 2,279,668 registered with United States Patent and Trademark Office (“USPTO”) on September 21, 1999 ( “the UNDER ARMOUR mark”).
3. Respondent’s <underaarmour.com> and <underarmours.com> disputed domain names are confusingly similar to Complainant’s UNDER ARMOUR mark.
4. Respondent’s disputed domain names are typosquatted versions of the UNDER ARMOUR mark.
5. Respondent has no rights or legitimate interests in the <underaarmour.com> and <underarmours.com> domain names.
a. Respondent is not commonly known by the disputed domain names.
b. Respondent is not sponsored by or affiliated with Complainant in any way.
c. Complainant has not given Respondent permission to use its mark in any way.
d. Respondent failed to respond to Complainant’s “Cease and Desist” letter.
e. Respondent uses the disputed domain names to redirect unsuspecting Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
f. Respondent presumably receives pay-per-click fees
g. Respondent is not providing a bona fide offering of goods or services or a legitimate noncommercial or fair use at the disputed domain names.
h. The earliest date on which Respondent registered the disputed domain names was June 27, 2005.
6. Respondent registered and is using the <underaarmour.com> and <underarmours.com> domain names in bad faith.
a. Respondent’s typosquatting behavior is evidence of bad faith use and registration.
b. Respondent is using the disputed domain names to generate revenue as “click through” websites.
c. Respondent is taking advantage or Complainant’s well known mark to achieve a competitive advantage.
d. Respondent is using a confusing similar domain name to resolve to a website featuring competing links, thus diverting potential consumers away from Complainant and disrupting its business.
B. RESPONDENT
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a top provider of performance apparel, footwear, sporting goods, accessories, and related goods and services.
2. Complainant owns numerous trademark registrations in the United States and many countries throughout the world for the UNDER ARMOUR mark. One of those marks is trademark Reg. No. 2,279,668 registered with United States Patent and Trademark Office (“USPTO”) on September 21, 1999 ( “the UNDER ARMOUR mark”).
3. Respondent registered the <underarmours.com> domain name on June 27, 2005.
4. Respondent registered the <underaarmour.com> domain name on July 14, 2006.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that its business was founded in 1996, and is now one of the world’s most successful, popular, and well-known providers of performance apparel, footwear, sporting goods, accessories, and related goods and services. Complainant asserts that it operates its own network of over 100 retail stores and generates a large amount of revenue from its only locations found at <underarmour.com>. Complainant alleges that it has rights in the UNDER ARMOUR mark based on its trademark registrations around the world. Complainant provides the Panel with extensive evidence of its registrations with various trademark offices around the world which the Panel accepts. On that evidence, the Panel concludes that Complainant owns numerous trademark registrations in the United States and many countries throughout the world for the UNDER ARMOUR mark. One of those marks is trademark Reg. No. 2,279,668 registered with United States Patent and Trademark Office (“USPTO”) on September 21, 1999 ( “the UNDER ARMOUR mark”).
Previous panels have found that evidence of a registration with a recognized authority is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”); see also Diners Club Int’l Ltd. v. RM Media, FA 1143776 (Nat. Arb. Forum March 24, 2008) (finding that Complainant’s registrations with the USPTO and IP Australia were more than adequate to satisfy Policy 4(a)(i).) The Panel therefore concludes that Complainant has established rights in the UNDER ARMOUR mark under Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain name is
identical or confusingly similar to Complainant’s UNDER ARMOUR trademark. Complainant argues that Respondent’s <underaarmour.com> and <underarmours.com> domain names are confusingly similar to Complainant’s UNDER ARMOUR mark under Policy ¶ 4(a)(i). Complainant submits that the disputed domain names are classic examples of typosquatting. The Panel notes that the <underaarmour.com> domain name adds an additional “a” to Complainant’s registered mark. The Panel also notes that the <underarmours.com> domain name adds an additional “s” to Complainant’s mark. The Panel notes also that both <underaarmour.com> and <underarmours.com> domain names remove the space between the words in Complainant’s UNDER ARMOUR mark and add the generic top-level domain (“gTLD”) “.com.” Prior panels have routinely found that variations such as these are insufficient to differentiate a disputed domain name from a given mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also 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 concludes that Respondent’s <underaarmour.com> and <underarmours.com> domain names are confusingly similar to Complainant’s UNDER ARMOUR mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s trademark and to use it in its domain names, making only the addition of a letter in one domain name and deleting a letter and adding another letter in the other domain name, implying that the domain names are official domain names of Complainant and that they will lead to an official website of Complainant dealing with Complainant’s products;
(b) Respondent has then caused the domain names to resolve to third party websites some of which compete with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the <underaarmour.com> and <underarmours.com> disputed domain names because it cannot demonstrate that it is commonly known by the domain names. Complainant asserts that the WHOIS information for the disputed domain names lists “Jardimar Holdings Corp.” as Registrant. Complainant also argues that it has never authorized, licensed, or given permission to Respondent to use its marks. Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no evidence on the record supporting such a finding, or where a complainant has not authorized a respondent to use its mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel therefore concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(e) Complainant argues that Respondent has no rights or legitimate interests in the <underaarmour.com> and <underarmours.com> disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names under Policy ¶¶ 4(c)(i) and (iii). Complainant explains that Respondent is using the disputed domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant further argues that Respondent receives revenue from the click-through fees associated with its website. The Panel notes that the <underaarmour.com> domain name resolves to a parked website featuring links such as; “Running Shoes,” “Nfl Apparel,” “Mens Clothing,” “Outdoor Clothing,” “Football Jerseys,” “Basketball Uniforms,” “Mens Outerwear,” and “Athletic Shoes.” See Exhibit H. The Panel sees that the<underarmours.com> disputed domain name resolves to a parked website featuring links including; “Discount Golf,” “Golf Apparel,” “Women’s Clothing,” “Nfl Apparel,” “Basketball Uniforms,” and “Fitness Wear.” Previous panels have found that using a confusingly similar domain name to resolve to a parked website featuring competing links and generating click-through revenue for the respondent is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 concludes that Respondent has no rights or legitimate interests in the disputed domain names because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has registered and is using the <underaarmour.com> and <underarmours.com> disputed domain names in bad faith under Policy ¶ 4(b)(ii). Complainant asserts that Respondent is a serial cybersquatter and has a pattern of cybersquatting behavior. Complainant provides Exhibit N to the Panel indicating previous UDRP cases where Panels have found for the transfer of a domain name that Respondent had registered and was using. SeeProvide Commerce, Inc. v. Jardimar Holdings Corp/ Charingola, FA 1502077 (Nat. Arb. Forum June 27, 2013); see alsoMacy’s Inc. and its subsidiary Macy’s West Stores, Inc. v. Jardimar Holdings Corp/ Charingola, FA 1473475 (Nat. Arb. Forum Jan. 25, 2013); see also Standard Bank of South Africa Limited v. Jardimar Holdings Corp./ charingola, FA 1463904 (Nat. Arb. Forum Nov. 8, 2012). Previous panels have found that evidence of previous UDRP cases ordering the transfer of a disputed domain name away from the stated respondent indicates bad faith use and registration 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). The Panel therefore finds accordingly, holding that Respondent’s bad faith registration and use is shown by the numerous UDRP decisions transferring the disputed domain name from Respondent’s possession to the holder of the mark.
Secondly, Complainant asserts that Respondent registered and uses the dispute domain names in bad faith under Policy ¶ 4(b)(iii). Complainant argues that Respondent features competing links on its website that promote products that are similar to those marketed by Complainant, thus diverting potential consumers away from Complainant to third parties, and disrupting its business. Previous panels have found that a respondent acts in bad faith under Policy ¶ 4(b)(iii) when it attempts to disrupt a complainant’s company by diverting consumers away from a complainant’s website and to a competing third-party website. See Compañía Mexicana de Aviación, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) The Panel concludes that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Thirdly, Complainant argues that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent is using the confusingly similar domain names to resolve to parked websites featuring pay-per-click links that compete with Complainant. See Exhibit H. Complainant contends that Respondent is purposely attracting and misleading Internet consumers to its websites for its own financial profit. Previous panels have held that using a confusingly similar domain name to resolve to a parked website featuring competing links is bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”) The Panel concludes that Respondent has registered the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Fourthly, Complainant argues that Respondent’s typosquatting behavior indicates bad faith use and registration. The Panel notes that Respondent adds a single letter to Complainant’s mark in each of the <underaarmour.com> and <underarmours.com> disputed domain names. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). The Panel concludes that Respondent’s typosquatting behavior would indicate an attempt to take advantage of plausible typos with regard to Complainant’s mark and domain name, and thus indicates bad faith use and registration under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Fifthly , in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the Complainant’s trademark in the manner described above and its subsequent use of the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <underaarmour.com> and <underarmours.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 27, 2013
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