Under Armour, Inc. v. JEAN LUCAS / DOMCHARME GROUP
Claim Number: FA1502001603208
Complainant is Under Armour, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is JEAN LUCAS / DOMCHARME GROUP (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <underarmoue.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2015; the Forum received payment on February 3, 2015.
On February 4, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <underarmoue.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 February 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2015 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@underarmoue.com. Also on February 5, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
(i) Complainant has registered the UNDER ARMOUR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,279,668, registered Sept. 21, 1999). The mark is used on or in connection with the sale of performance apparel, footwear, sporting goods, accessories, and related goods and services. The <underarmoue.com> domain name is confusingly similar to the mark because the domain name differs only by a single character, and thus is a classic example of typosquatting. Also the addition of the generic top-level domain (“gTLD”) is not relevant.
(ii) Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known as the domain name, nor has Respondent ever possessed licensing rights to use the UNDER ARMOUR mark in domain names. Further, the domain name resolves to a website wherein hyperlinks appear to lead to Complainant’s competitors.
(iii) Respondent has registered and is using the domain name in bad faith. All of the following demonstrate Respondent’s bad faith: offering the domain name for sale, engaging in a pattern of bad faith registrations, disrupting Complainant’s business, attempting to commercially benefit from a likelihood of confusion, and typosquatting.
B. Respondent
Respondent failed to submit a timely response. The disputed domain name <underarmoue.com> was registered on February 22, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 has registered the UNDER ARMOUR mark with the USPTO (e.g., Reg. No. 2,279,668, registered Sept. 21, 1999). The mark is used on or in connection with the sale of performance apparel, footwear, sporting goods, accessories, and related goods and services. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <underarmoue.com> domain name is confusingly similar to the UNDER ARMOUR mark because the domain name differs only by a single character. The Panel infers that by substituting one letter for another to create a common misspelling of the mark Respondent has created a confusingly similar domain name. See Victoria's Secret v. Zuccarini, NAF Claim No. FA0010000095762 (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant's marks); Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel also notes that the gTLD “.com” fails to provide any distinguishing relief for Respondent. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds confusing similarity under Policy ¶ 4(a)(i).
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 argues that Respondent is not commonly known as the domain name, nor has Respondent ever been in possession of licensing rights that would allow for the use of the UNDER ARMOUR mark in domain names. The Panel notes that “Jean Lucas” is listed as the registrant of record for the <underarmoue.com> domain name. The Panel also notes that the record is void of any evidence that would suggest that Respondent is commonly known as the domain name or possesses licensing rights to use the mark in domain names. Where the record is void of such evidence, the Panel finds that Respondent lacks rights or legitimate interests under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant argues that Respondent’s use of the <underarmoue.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that the disputed domain name is being used to host a website where hyperlinks take Internet users to competing products. The Panel notes that the domain name resolves to a website wherein hyperlinks appear to lead to Complainant’s competitors. See Compl., at Attached Ex. H. The Panel sees Respondent to be using the website to divert users to competing products or services, and thus finds a lack of rights or legitimate interests under Policy ¶ 4(c)(i) and Policy ¶ 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”).
Complainant argues that Respondent has registered and is using the <underarmoue.com> domain name in bad faith. First, Complainant argues that the domain name is being offered for sale, which evidences bad faith under the Policy. The Panel notes that Complainant has provided a screenshot of the Whois record for the disputed domain name that reads “UnderarmOUe.com is for sale! The owner of the domain you are researching has it listed for sale.” See Compl., at Attached Ex. I. The Panel views this evidence and infers from Respondent’s behavior that it has engaged in bad faith given the absence of any response or justification from Respondent. See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the respondent’s WHOIS registration information contained the words, “This is [sic] domain name is for sale”); CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”).
Second, Complainant argues that the Respondent has engaged in a pattern of bad faith registrations. The Panel notes that Complainant has provided a list of three other occasions on which Respondent has been subjected to UDRP decisions. See Compl. at Attached Ex. N. The Panel views the evidence and determines that Complainant has provided sufficient evidence of Policy ¶ 4(b)(ii) bad faith. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations); TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Third, Complainant argues that Respondent is disrupting its business by hosting a website containing hyperlinks that lead Internet users to third-party websites, some of which compete with Complainant. The Panel notes that the disputed domain name resolves to a website wherein hyperlinks appear to lead to Complainant’s competitors. See Compl., at Attached Ex. H. Where a respondent has used a domain name to divert Internet users to competing services, prior panels have found bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Thus, the Panel agrees Respondent to be using the disputed domain name to divert Internet traffic to Complainant’s competitors, and finds Policy ¶ 4(b)(iii) bad faith.
Fourth, Complainant asserts that Respondent is attempting to commercially benefit from a likelihood of confusion. Complainant claims that Internet users are likely to view the resolving webpage and think it is somehow affiliated with or sponsored by Complainant. Complainant also claims that Respondent is presumably receiving pay-per-click fees, and that this evidences Respondent’s commercial benefit. Although there is concern in using such a presumption as a basis for bad faith argument (see McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (“Complainant must do more than just show pay-per-click use to establish bad faith... pay-per-click websites are not in and of themselves unlawful or illegitimate”)), the Panel finds that Respondent’s alleged diversion of Internet traffic to competing products or services constitutes bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Fifth, Complainant asserts that Respondent is typosquatting in bad faith. Complainant claims that the substitution of the letter “e” for the “r” in the disputed domain name was done with the purpose of taking advantage of a common typographical error. The Panel agrees typosquatting from that fact that Respondent substituted one letter for another to create a common misspelling of the mark. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent had “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). Therefore, the Panel agrees Respondent to have engaged in typosquatting, and finds bad faith under 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <underarmoue.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 16, 2015
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