The Finish Line, Inc. v. Sonya Lopez
Claim Number: FA1005001322655
Complainant is The Finish Line, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <finishlie.com>, registered with MONIKER ONLINE SERVICES, INC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 3, 2010.
On May 5, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <finishlie.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. verified that Respondent is bound by the MONIKER ONLINE SERVICES, INC. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2010, 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@finishlie.com. Also on May 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 June 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 a Written Notice, as defined in Rule 1. 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 makes the following assertions:
1. Respondent’s <finishlie.com> domain name is confusingly similar to Complainant’s FINISH LINE mark.
2. Respondent has no rights to or legitimate interests in the <finishlie.com> domain name.
3. Respondent registered and used the <finishlie.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Finish Line,
Inc., is a retailer specializing in athletic footwear. Complainant owns trademark registrations with
the United States Patent and Trademark Office (“USPTO”) for the FINISH LINE
marks (e.g., Reg. No. 1,960,883
issued March 5, 1996).
Respondent, Sonya Lopez,
registered the <finishlie.com>
domain name July 10, 2004. The disputed
domain name resolves to a directory website displaying generic links to third
party competitors of Complainant and other unrelated websites.
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."
Given 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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant is the owner of multiple USPTO trademark
registrations for the FINISH LINE marks (e.g.,
Reg. No. 1,960,883 issued March 5, 1996).
The Panel finds that holding a trademark registration with the USPTO is
conclusive proof of Complainant’s rights in the FINISH LINE mark according to
Policy ¶ 4(a)(i), even when Respondent lives or
operates outside the
Complainant alleges that Respondent’s <finishlie.com> disputed domain name is confusingly similar to Complainant’s FINISH LINE mark as the only differencez are the omission of the letter “n” and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that misspelling Complainant’s mark by omitting a single letter does not create a distinct domain name outside the range of confusing similarity pursuant to Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). The Panel also finds that adding a gTLD does not distinguish the resulting domain name or prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <finishlie.com> disputed domain name is confusingly similar to Complainant’s FINISH LINE mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <finishlie.com> disputed domain name. Policy ¶ 4(a)(ii) requires that Complainant first make a prima facie case before the burden to demonstrate rights and legitimate interests transfers to Respondent. The Panel finds that Complainant established a prima facie case in these proceedings; Respondent’s failure to respond to the Complaint allows the Panel to make an inference that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
This Panel elects, however, to consider the evidence in the record according to the Policy ¶ 4(c) factors before determining whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the <finishlie.com> disputed domain since the WHOIS information for the disputed domain name lists the registrant as “Sonya Lopez.” The Panel finds that the failure of the WHOIS information to identify the Respondent as the disputed domain name indicates that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant alleges that Respondent uses the <finishlie.com> disputed domain name in order to maintain a generic website filled with links to other third-party websites, including competitors of Complainant. Complainant argues that Respondent profits through these links by pay-per-click fees. The Panel finds that Respondent’s use of Complainant’s mark to profit through marketing of pay-per-click links is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also 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)).
Complainant asserts that Respondent registered the <finishlie.com> disputed domain name,
omitting a single letter from Complainant’s mark, in order to capitalize on
frequent typographical errors made when searching for Complainant. The Panel finds that intentionally attempting
to benefit from Internet users’ typing mistakes while appropriating
Complainant’s mark is typosquatting and indicates Respondent’s lack of rights
and legitimate interests in the disputed domain name according to Policy ¶
4(a)(ii). See Microsoft
Corp. v. Domain Registration
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that the only function of Respondent’s website resolving from the <finishlie.com> disputed domain name is to profit by promoting links to Complainant’s competitors and other unrelated third-party websites. The Panel finds that by attempting to divert Internet users seeking Complainant to other websites potentially offering competing goods, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent places the various
competing and other unrelated links on Respondent’s resolving website in order
to earn pay-per-click revenue when Internet users are diverted to Respondent’s
site click on the links. Complainant
asserts that Respondent aims to increase traffic to its website, and thereby increase
profit as well, by using a common typographical error made by those who access
Complainant’s famous mark on the Internet. The Panel finds that Respondent’s efforts to
attract Internet users to its website using Complainant’s mark in order to
create confusion and increase its profits, also supports findings of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the confusingly similar <finishlie.com> disputed domain name. The Panel finds this typosquatting, on its face, to be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also 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 satisfied the elements of ICANN 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 <finishlie.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 8, 2010
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