Bass Pro Intellectual Property, LLC v. JAMES HART / JHART
Claim Number: FA1404001552852
Complainant is Bass Pro Intellectual Property, LLC (“Complainant”), represented by Robert B. Burlingame of Pillsbury Winthrop Shaw Pittman LLP, California, USA. Respondent is JAMES HART / JHART (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ascendkayak.com>, registered with eNom, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2014; the National Arbitration Forum received payment on April 8, 2014.
On April 7, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ascendkayak.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2014 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@ascendkayak.com. Also on April 14, 2014, 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 May 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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.
i. Complainant owns the ASCEND mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,003,405, registered July 26, 2011).
ii. Complainant is a premier sports equipment and outdoor recreation retailer. Complainant uses the ASCEND mark to promote recreational equipment; notably, the mark is used in connection with kayaks.
i. Policy ¶ 4(a)(i)
1. The <ascendkayak.com> domain name is confusingly similar to Complainant’s ASCEND mark as the domain name adds the descriptive term “kayak,” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The term “kayak” is a direct reference to the product sold under the ASCEND mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. Complainant has not authorized Respondent’s use of the ASCEND mark.
2. Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
3. The disputed domain resolves to a website advertising goods bearing the ASCEND mark, but directs interested users to a third-party website where the items are available for purchase through Complainant’s competitors.
iii. Policy ¶ 4(a)(iii)
1. The disputed domain name is disruptive of Complainant’s business as users are forwarded to a third-party website where competitors of Complainant sell outdoor recreational goods.
2. Respondent registered the disputed domain name in an effort to take commercial advantage of Internet users’ mistakes.
3. Respondent had actual knowledge of Complainant’s rights in the ASCEND mark at the time the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Bass Pro Intellectual Property, LLC of Springfield, MO, USA. Complainant is the owner of multiple USA registrations for the mark ASCEND which it has used in conjunction with sales and services related to sports equipment and outdoor recreation goods. Specifically ASCEND is registered in connection with Kayaks and Kayak paddles as well as other types of camping items and athletic apparel. Complainant has continuously used its ASCEND mark in the manner noted since at least as early as its registration in 2011.
Respondent is JAMES HART / JHART, of Miami, FL, USA. Respondent’s registrar’s address is listed as Kirkland , WA, USA. Respondent registered the disputed domain name on or about July 23, 2013.
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.”).
Complainant is a premier sports equipment and outdoor recreation retailer. Complainant uses the ASCEND mark to promote recreational equipment; notably, the mark is used in connection with kayaks. Complainant claims to own the ASCEND mark through its trademark registrations with the USPTO (e.g., Reg. No. 4,003,405, registered July, 26, 2011). The Panel finds that Complainant’s USPTO registrations of the ASCEND mark satisfy the requirements of Policy ¶ 4(a)(i). See Amusement Art, LLC v. zarathustra james / bomit, FA 1536201 (Nat. Arb. Forum Jan. 29, 2014) (“The Panel observes that Respondent appears to reside and operate within the United States. Therefore, the Panel holds that Complainant’s registration of the MR BRAINWASH mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues that the <ascendkayak.com> domain name is confusingly similar to Complainant’s ASCEND mark as the domain name adds the descriptive term “kayak,” and the gTLD “.com” to Complainant’s mark. Complainant contends that the term “kayak” is a direct reference to the product sold under the ASCEND mark. Complainant urges that such alterations do not sufficiently negate the confusing similarity. The panel in Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) concluded that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark. The Panel here finds that the <ascendkayak.com> domain name is confusingly similar to Complainant’s ASCEND mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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). The Complainant has met this burden.
In arguing that Respondent lacks rights or legitimate interests in the disputed domain name, Complainant contends that Respondent is not commonly known by the disputed domain name, and points to the WHOIS information as support. The Panel notes that the WHOIS record identifies “JAMES HART / JHART” as the registrant. Further, Complainant contends that Respondent is not authorized to use the ASCEND mark. Where the available evidence in the record, including the WHOIS information, does not imply that the respondent is commonly known by the disputed domain name, previous panels have held that the respondent is not commonly known by the domain name for the purposes of the Policy ¶ 4(c)(ii) analysis. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel here finds that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant further argues that Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Specifically, Complainant asserts the disputed domain resolves to a website advertising goods bearing the ASCEND mark, and then forwards interested users to a third-party website where the items are available for purchase through Complainant’s competitors. Past panels have found that the respondent was not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use where the respondent operated a webpage linking Internet users to third parties competing with the complainant and likely commercially benefiting as a result. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel here finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that the <ascendkayak.com> domain name is disruptive of Complainant’s business as users are forwarded to a third-party website where competitors of Complainant sell outdoor recreational goods. Complainant has provided the Panel with screenshots from the disputed website. The Panel notes that the resolving webpage promotes a link to amazon.com. In David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007), the panel determined that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business. The Panel here finds that Respondent’s efforts amount to bad faith disruption pursuant to Policy ¶ 4(b)(iii).
Complainant further argues that Respondent registered the disputed domain name in an effort to take commercial advantage of Internet users’ mistakes. Complainant urges that such use demonstrates Respondent’s bad faith. Previous panels have held that such use evinces bad faith. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). The Panel here finds Respondent’s efforts also support a conclusion indicating Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ascendkayak.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 20, 2014
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