Under Armour, Inc. v. Conquistador Sat
Claim Number: FA1308001514667
Complainant is Under Armour, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, United States. Respondent is Conquistador Sat (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <underarmmour.com>, registered with Fabulous.Com Pty Ltd.
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.
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 14, 2013, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <underarmmour.com> domain name is registered with Fabulous.Com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.Com Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty Ltd. 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 August 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@underarmmour.com. Also on August 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 September 18, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <underarmmour.com> domain name is confusingly similar to Complainant’s UNDER ARMOUR mark.
2. Respondent does not have any rights or legitimate interests in the <underarmmour.com> domain name.
3. Respondent registered and uses the <underarmmour.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns registrations for its UNDER ARMOUR mark in ninety-five countries, including registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No 2,279,668, Registered September 21, 1999). Complainant uses the mark in connection with providing performance apparel and related goods.
Respondent registered the <underarmmour.com> domain name on November 5, 2006, and uses it to resolve to a website that promotes links to third parties that offer products that directly compete with Complainant’s performance apparel products.
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 Panel finds that Complainant has sufficiently established its rights in the UNDER ARMOUR mark through its registrations with the USPTO. The Panel notes that Complainant has also registered its UNDER ARMOUR mark in Respondent’s country of residence with the German DPMA (e.g., Reg. No. 30,254,490, registered December 16, 2002). Previous panels have held that a complainant’s registration of a mark with multiple national trademark authorities sufficiently establishes the complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See, e.g., Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent’s <underarmmour.com> domain name is confusingly similar to its UNDER ARMOUR mark, because the domain name differs from the mark by a single character: the additional letter “m” in the word “armour.” The disputed domain name eliminates the space found in Complainant’s UNDER ARMOUR mark and also adds the generic top-level domain (“gTLD”) “.com.” However, previous panels have held that a disputed domain name’s elimination of a space and addition of a gTLD does not sufficiently distinguish the domain name from a complainant’s mark. See, e.g., 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)). Previous panels have also held that a disputed domain name’s addition of a single character does not preclude a finding of confusing similarity under Policy ¶ 4(a)(i). See 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 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).”). Accordingly, the Panel finds that the <underarmmour.com> domain name is confusingly similar to Complainant’s mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
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 alleges that Respondent is not commonly known as <underarmmour.com> under Policy ¶ 4(c)(ii). The WHOIS information identifies the registrant of the disputed domain name as “Conquistador Sat,” which demonstrates that Respondent is not known by the name of <underarmmour.com>. Complainant states that it has not authorized Respondent to use its UNDER ARMOUR mark in a domain name. Previous panels have held that a respondent is not commonly known by a disputed domain name where the WHOIS information suggests the respondent is known by a different name and the complainant alleges it has not authorized the respondent to use its mark. See, e.g., 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). Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to the Policy.
Complainant next alleges that Respondent’s use of the <underarmmour.com> domain name is not protected as 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 the domain name resolves to a website that promotes a series of links to third-party websites, some of which directly compete with Complainant in the performance apparel industry. The Panel notes a screenshot of the resolving website displaying links entitled “Women’s Compression Socks,” “TJ MAXX Deals,” and “JCPENNEY OFFICIAL SITE,” as well as links to websites that appear to be unrelated to Complainant. Previous panels have held that a respondent’s use of a disputed domain name to promote hyperlinks to third parties that compete with the complainant is not protected under Policy ¶¶ (4)(c)(i) or 4(c)(iii). See 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”). Similarly, previous panels have held that Policy ¶¶ (4)(c)(i) or 4(c)(iii) does not protect a respondent’s use of a disputed domain name to promote hyperlinks to third parties that are unrelated to the complainant. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). Therefore, the Panel finds that Respondnet’s use of the disputed domain name 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).
Respondent’s registration and use of the <underarmmour.com> domain name diverts potential customers away from Complainant to the websites of third parties, which disrupts Complainant’s business and evidences Respondent’s bad faith under Policy ¶ 4(b)(iii). Specifically, the disputed domain resolves to a website that promotes links to third parties that offer products that directly compete with Complainant’s performance apparel products. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel held that the respondent’s use of the disputed domain name to promote links to the complainant’s competitors constituted bad faith disruption under Policy ¶ 4(b)(iii). The Panel thus finds that Respondent has disrupted Complainant’s business through its promotion of links to Complainant’s competitors, which constitutes bad faith registration and use of the <underarmmour.com> domain name pursuant to Policy ¶ 4(b)(iii).
Respondent has also demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv), because the <underarmmour.com> domain name attracts Internet users seeking goods under Complainant’s UNDER ARMOUR mark for the commercial benefit of Respondent. Previous panels have presumed that a respondent attained a commercial benefit from its promotion of hyperlinks that are unrelated or related to Complainant’s business. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process); 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.’”). Likewise, the Panel finds that Respondent has attained a commercial benefit from its registration and use of the disputed domain name, which demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).
The <underarmmour.com> domain name merely inserts an additional letter “m” into Complainant’s UNDER ARMOUR mark, a classic example of typosquatting, which is itself evidence of bad faith under Policy ¶ 4(a)(iii). Previous panels have held that a respondent that engages in typosquatting demonstrates bad faith under the Policy. 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <underarmmour.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 25, 2013
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