Pure Sports v. FC Golden State Soltilo
Claim Number: FA1708001745692
Complainant is Pure Sports (“Complainant”), represented by Mark A. Calkins of Pure Sports, California, USA. Respondent is FC Golden State Soltilo (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fcgoldenstatesoltilo.com> and <fcgssoltilo.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 22, 2017; the Forum received payment on August 22, 2017.
On August 23, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <fcgoldenstatesoltilo.com> and <fcgssoltilo.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2017 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@fcgoldenstatesoltilo.com, postmaster@fcgssoltilo.com. Also on August 29, 2017, 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 September 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
Complainant is a national and international soccer organization that offers clothing and other accessories related to soccer. In connection with this business, Complainant uses the F.C. GOLDEN STATE and FCGS marks to promote its goods and services. Complainant has rights in the F.C. GOLDEN STATE and FCGS marks based upon common law and secondary meaning instilled within the marks. Respondent’s <fcgoldenstatesoltilo.com> and <fcgssoltilo.com> are confusingly similar as they append the generic term “soltilo” and the generic top-level-domain (“gTLD”) “.com” to Complainant’s wholly appropriated marks.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent’s use of the F.C. GOLDEN STATE and FCGS marks. Further, Respondent failed to use <fcgoldenstatesoltilo.com> and <fcgssoltilo.com> in connection with a bona fide offer of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, Respondent’s domain names redirect website traffic to Complainant’s own domain name in an attempt to create an association between Complainant and a third-party soccer organization.
Respondent registered and uses <fcgoldenstatesoltilo.com> and <fcgssoltilo.com> in bad faith. Respondent’s registration of multiple domain names that infringe on a mark constitutes a pattern of bad faith registration. Respondent intentionally attracts Internet users otherwise seeking Complainant for Respondent’s commercial gain. Respondent had actual knowledge of Complainant’s rights in the F.C. GOLDEN STATE and FCGS marks prior to registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a California Nonprofit Public Benefit Corporation that is a national and international soccer organization that offers clothing and other accessories related to soccer.
3. Respondent registered the <fcgoldenstatesoltilo.com> and <fcgssoltilo.com> domain names on April 26, 2017.
4. The domain names redirect website traffic to Complainant’s own website in an attempt to create the false impression of an association between Complainant and a third-party soccer organization.
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(f), 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 (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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the F.C. GOLDEN STATE and FCGS marks based upon common law and secondary meaning instilled within the marks. Registration of a trademark is unnecessary if a complainant can demonstrate secondary meaning instilled within a mark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”). Here, Complainant proffers that it has over 100 different teams under its banner, has run a website at <fcgoldenstate.com> for nearly ten years, and has utilized the marks in commerce since as early as March 3, 2008. See Compl., at Attached Ex. A&B, C. The Panel agrees with Complainant’s submissions and finds that it has common law rights in the F.C. GOLDEN STATE and FCGS marks.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s common law F.C. GOLDEN STATE and FCGS marks. Complainant argues Respondent’s <fcgoldenstatesoltilo.com> and <fcgssoltilo.com> domain names are confusingly similar as they append the generic term “soltilo” and the gTLD “.com” to Complainant’s wholly appropriated marks. The addition of generic terms and gTLDs are insufficient to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). As such, the Panel finds Respondent’s domain names to be confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s F.C. GOLDEN
STATE and FCGS marks and to use them in its domain names;
(b) Complainant has caused the domain names to redirect website traffic to Complainant’s own website in an attempt to create the false impression of an association between Complainant and a third-party soccer organization;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues Respondent is not commonly known by the disputed domain names nor has Complainant authorized Respondent’s use of the F.C. GOLDEN STATE and FCGS marks. In the absence of a Response, WHOIS information can substantiate a finding that a respondent is not commonly known by a disputed domain name per Policy ¶¶ 4(c)(i) & (iii); additionally, failure to obtain a complainant’s authorization to use a mark further evidences a finding that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Use of a domain name privacy service further evinces a finding that a respondent is not commonly known by a disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The WHOIS information of record named “Domains By Proxy, LLC” as the registrant initially, but was later revealed to be “FC Golden State Soltilo.” As such, the Panel finds that Respondent is not commonly known by the disputed domain names;
(e) Complainant argues Respondent has failed to use the <fcgoldenstatesoltilo.com> and <fcgssoltilo.com> domain names in connection with a bona fide offer of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, Respondent’s domain names redirect website traffic to Complainant’s own domain name in an attempt to create the false impression of an association between Complainant and a third-party soccer organization, the Soltilo Familia Soccer School or Soltilo FC, a competitor of Complainant. Failure to make an active use of a disputed domain name can evince a finding that a respondent lacks rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) & (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain names.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent’s registration of multiple domain names that infringe on the F.C. GOLDEN STATE marks constitutes a pattern of bad faith registration. Where respondents have registered multiple domain names that infringe on a mark, past panels have found evidence of a pattern of bad faith registration per Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum February 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Here, Complainant argues that the <fcgoldenstatesoltilo.com> domain name appropriates the F.C. GOLDEN STATE mark while the <fcgssoltilo.com> domain name appropriates the FCGS mark. As such, the Panel finds that Respondent exhibited a pattern of bad faith registration.
Secondly, Complainant contends Respondent intentionally attracts to its website Internet users otherwise seeking Complainant for Respondent’s commercial gain. Use of a complainant’s mark in a confusingly similar domain name to profit is evidence of bad faith per Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). In the instant case, Complainant argues Respondent’s <fcgoldenstatesoltilo.com> and <fcgssoltilo.com> domain names redirect to Complainant’s own website in an attempt to associate Soltilo FC with Complainant’s successful business. As the Panel agrees, it finds Respondent used the disputed domain names in bad faith.
Thirdly, Complainant submits Respondent had actual knowledge of Complainant’s rights in the F.C. GOLDEN STATE and FCGS marks prior to registration of the disputed domain names. Per Policy ¶ 4(a)(iii), actual knowledge can be discerned from an analysis of the domain name and the use made of it. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Respondent uses multiple marks from Complainant to register the domain names, and the resolving website is that of Complainant’s own business. The Panel agrees with Complainant’s submission and finds evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the F.C. GOLDEN STATE and FCGS marks and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fcgoldenstatesoltilo.com> domain name and the <fcgssoltilo.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 20, 2017
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