Bass Pro Intellectual Property, LLC v. John Ballard / bassproguns
Claim Number: FA1404001552864
Complainant is Bass Pro Intellectual Property, LLC (“Complainant”), represented by Robert B. Burlingame of Pillsbury Winthrop Shaw Pittman LLP, California, USA. Respondent is John Ballard / bassproguns (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bassproguns.com>, registered with Melbourne IT Ltd.
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.
Hon. Karl V. Fink (Ret.), 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, Melbourne IT Ltd confirmed by e-mail to the National Arbitration Forum that the <bassproguns.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT 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 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@bassproguns.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 Hon. Karl V. Fink (Ret.), 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, Bass Pro Intellectual Property, LLC, is a well-known premiere sports equipment and outdoor sports and recreation retailer, with stores throughout the United States.
ii. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the BASS PRO mark (Reg. No. 2,192,947, registered October 6, 1998).
iii. Respondent’s <bassproguns.com> domain name is confusingly similar to Complainant’s BASS PRO mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent’s disputed domain name resolves to a website featuring advertisements and links to goods and services that compete with the products Complainant offers and deep links to webpages on Complainant’s website at <basspro.com>.
i. Respondent registered and is using the disputed domain name in bad faith.
ii. The <bassproguns.com> domain name is also disruptive to Complainant’s business.
iii. Respondent is using the <bassproguns.com> domain name to draw traffic and business to Respondent’s website.
iv. Respondent had constructive and actual knowledge of Complainant’s rights in the BASS PRO marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 claims that it is a well-known premiere sports equipment and outdoor sports and recreation retailer, with stores throughout the United States. Complainant alleges that it owns a trademark registration with the USPTO for the BASS PRO mark (Reg. No. 2,192,947, registered October 6, 1998). Complainant’s registration of the BASS PRO mark shows that it has rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant asserts that Respondent’s <bassproguns.com> domain name is confusingly similar to Complainant’s BASS PRO mark. Complainant argues that Respondent has merely deleted the space between the words BASS and PRO and added the generic term “guns” and the generic top-level domain (“gTLD”) “.com.” The Panel agrees that Respondent’s omission of spaces, inclusion of a gTLD, and addition of a generic term does not differentiate the domain name from the mark pursuant to 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)); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Therefore, the Panel determines that Respondent’s <bassproguns.com> domain name is confusingly similar to Complainant’s BASS PRO mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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); 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 <bassproguns.com> domain name. Complainant alleges that Respondent is not authorized to use the BASS PRO marks or the disputed domain name. Complainant contends that Respondent’s name is “John Ballard,” not “Bass Pro.” In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names containing the complainant’s mark and failed to submit evidence that it is commonly known by the domain name. The Panel finds that Respondent is not commonly known under the <bassproguns.com> domain name according to Policy ¶ 4(c)(ii).
Complainant states that Respondent’s <bassproguns.com> domain name resolves to a website featuring advertisements and links to goods and services that compete with the products Complainant offers and deep links to webpages on Complainant’s website at <basspro.com>. Respondent’s disputed domain name leads to a website including competing links such as “Guns,” “Buy Ammunition Online Now!,” and more. Therefore, the Panel finds that Respondent’s use of the <bassproguns.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has proven this element.
Complainant argues that Respondent’s <bassproguns.com> domain name is disruptive to Complainant’s business. Complainant alleges that Respondent’s disputed domain name resolves to a website where Respondent provides advertisements and links to Complainant’s competitors and their competing goods. The Panel finds that Respondent is using the disputed domain name to provide competing links and advertisements and the Panel holds that Respondent is disrupting Complainant’s business. Therefore, the Panel concludes that Respondent has registered and is using the <bassproguns.com> domain name in bad faith according to Policy ¶ 4(b)(iii). See 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).”).
Complainant contends that Respondent is using the <bassproguns.com> domain name to draw traffic and business to Respondent’s website. The Panel observes that Respondent uses the disputed domain name to provide advertisements related to “Bass Pro Guns” and “Bass Pro Hunting.” Complainant argues that Respondent’s only purpose in using the disputed domain name is to benefit from the goodwill and fame of Complainant’s BASS PRO mark in order to drive visitors to Respondent’s website to increase traffic and revenue. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel found that respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names. The Panel agrees that Respondent’s conduct amounts to Policy ¶ 4(b)(iv) bad faith.
Complainant asserts that Respondent had constructive and actual knowledge of Complainant’s rights in the BASS PRO marks. Complainant argues that most of Complainant’s USPTO registrations for the BASS PRO marks predate Respondent’s registration of the <bassproguns.com> domain name. While prior panels have found that constructive knowledge in a mark is not sufficient to support a finding of bad faith, the Panel finds that, due to Respondent’s use of the disputed domain name to display links to Complainant’s webpages, Respondent had actual knowledge of the BASS PRO mark. Consequently, the Panel holds that Respondent registered the <bassproguns.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <bassproguns.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: May 8, 2014
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