Lance Lambros v. William Brown
Claim
Number: FA0310000198963
Complainant is Lance Lambros, Mashpee, MA
(“Complainant”) represented by Christopher
MacKinnon, 628 Main Street, Mashpee, MA 02649. Respondent is William
Brown, 221 New Road, Avon,
CT 06001 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <capecodsportswear.com>, registered with Namesdirect.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 1, 2003; the Forum received a hard copy of the
Complaint on October 1, 2003.
On
October 2, 2003, Namesdirect confirmed by e-mail to the Forum that the domain
name <capecodsportswear.com> is registered with Namesdirect and
that Respondent is the current registrant of the name. Namesdirect has verified
that Respondent is bound by the Namesdirect registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
October 14, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 3, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@capecodsportswear.com by
e-mail.
Having
received no timely Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
Respondent
did communicate via e-mail to the Administrative Panel (the "Panel")
that it would transfer the domain name to Complainant. Respondent also requested compensation from
the Panel. However, this communication
occurred two days after the Response deadline, did not conform to the
requirements of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules"), contained no substantive defenses to Complainant’s
allegations, and asked for relief that is outside the scope of this Panel’s
authority.
On
November 6, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.
Having
reviewed the communications records, the Panel finds that the Forum has
discharged its responsibility under Paragraph 2(a) of the Rules "to employ
reasonably available means calculated to achieve actual notice to
Respondent." 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
formal Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <capecodsportswear.com>
domain name is confusingly similar to Complainant’s CAPE COD SPORTSWEAR, LTD.
mark.
2. Respondent does not have any rights or
legitimate interests in the <capecodsportswear.com> domain name.
3. Respondent registered and used the <capecodsportswear.com>
domain name in bad faith.
B. Respondent failed to submit a formal
Response in this proceeding.
Complainant
registered the CAPE COD SPORTSWEAR, LTD. mark with the Secretary of the
Commonwealth of Massachusetts on March 4, 1997. Complainant has been doing business as CAPE CODE SPORTSWEAR, LTD.
since February 10, 1995. The mark is
used for sport and corporate apparel, as well as accessories for that apparel.
Respondent
initially registered <capecodsportswear.com> on January 25, 2001
and renewed its registration on December 6, 2002. At the time the Complaint was filed, the disputed domain name was
used to sell football administration software.
Previously, the domain name was used to offer competing services with
CAPE COD SPORTSWEAR, LTD. Included on
the website was the name of Complainant.
Complainant submitted affidavits of customers who placed orders on the
website, and mistakenly believed that Respondent’s site was owned and operated
by Complainant. Respondent offered to
sell the domain name to Complainant for $2,500.
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."
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.
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.
Complainant has
established it rights in the CAPE COD SPORTSWEAR, LTD. mark through
registration with the State of Massachusetts and continuous use in commerce
since 1995.
Respondent’s
domain name <capecodsportswear.com> is confusingly similar to
Complainant’s mark because it contains CAPE COD SPORTSWEAR, LTD. in its
entirety, except for the “LTD.” ending, which is merely a business designation. See Nikon, Inc. and Nikon Corp. v.
Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) holding that
confusing similarity under the Policy is decided upon the inclusion of a
trademark in the domain name; see also
Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
D2000-1525 (WIPO Jan. 29, 2001) holding that confusing similarity under the
Policy is decided upon the inclusion of a trademark in the domain name.
Therefore,
Complainant has established Policy ¶ 4(a)(i).
Complainant has
asserted Respondent lacks rights and legitimate interests in <capecodsportswear.com>. Respondent must provide evidence of its
rights or legitimate interests. Since
Respondent has not submitted a formal Response to the Complaint, this Panel may
infer that it lacks rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent
has no rights or legitimate interests with respect to the domain name, it is
incumbent on Respondent to come forward with concrete evidence rebutting this
assertion; see also Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that once
Complainant asserts that Respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name.
Furthermore,
Respondent had been using the disputed domain name for business purposes that
were in competition with Complainant.
Thus, Internet users attempting to find Complainant by typing in its
business name would be directed to Respondent’s site. Only later did Respondent change the content of the website to
reflect a different use. This conduct
does not qualify as a bona fide offering of goods or services, pursuant to
Policy ¶ 4(c)(i), or a making of a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Computerized Sec. Sys.,
Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services; see
also Chip Merch., Inc. v. Blue
Star Elec., D2000-0474 (WIPO Aug. 21, 2000) finding that the disputed
domain names were confusingly similar to Complainant’s mark and that
Respondent’s use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods.
In addition,
there has been no evidence put forward that Respondent has been commonly known
by <capecodsportswear.com>, pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply; see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002) holding that where Complainant has asserted that Respondent has no rights
or legitimate interests with respect to the domain name, it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion; see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) finding that once Complainant asserts that
Respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name.
Therefore,
Complainant has established Policy ¶ 4(a)(ii).
Respondent
attempted to sell the disputed domain name to Complainant for $2500, an asking
price that far exceeds Respondent’s out-of-pocket expenses related to the
domain name. This excessive price
indicates that a primary purpose for the registration and use of the domain
name was to sell it to Complainant in bad faith pursuant to Policy ¶
4(b)(i). See Am. Online, Inc. v.
Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16,
2000) finding bad faith where Respondent offered domain names for sale; see also Prudential
Ins. Co. of Am. v. TPB Fin. a/k/a B. Evans, FA 105218 (Nat. Arb. Forum Apr. 8, 2002) finding bad
faith registration and use pursuant to Policy ¶ 4(b)(i) where Respondent
offered to sell the domain name for $900.
Furthermore,
Respondent used the disputed domain name in competition with Complainant. Respondent even included Complainant’s
personal name on the website, leaving Internet users with the assumption that
it was Complainant’s business they were doing business with. Respondent’s use of the website for this
disruptive purpose evidences bad faith registration and use pursuant to Policy
¶ 4(b)(iii) & (iv). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO
Feb. 5, 2001) finding that the Respondent likely registered the contested domain
name with the intent to disrupt Complainant's business and create user
confusion due to the competitive relationship between Complainant and
Respondent; see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business; see
also H-D Mich., Inc. v. Petersons Auto. a/k/a Larry Petersons, FA
135608 (Nat. Arb. Forum Jan. 8, 2003) finding that the disputed domain name was
registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through
Respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using Complainant’s marks and likeness.
Therefore,
Complainant has established 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 <capecodsportswear.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
November 19, 2003
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