Luxilon Sports NV v. Agilibus Tenis
Servicios Deportivos SL
Claim
Number: FA0505000477930
Complainant, Luxilon Sports NV (“Complainant”), is
represented by Jeff Davies, 5452 Coral Way, Orlando, FL 32839. Respondent is Agilibus Tenis Servicios Deportivos SL (“Respondent”), Balcon al
Mar 45 E Javea, Alicante 03730, Spain.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <luxilon.com>, registered with Tucows
Inc.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 31, 2005.
On
May 17, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <luxilon.com> is registered with Tucows Inc.
and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is
bound by the Tucows Inc. 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
June 8, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 28, 2005 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@luxilon.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 30, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A. Crary 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." 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.
A. Complainant makes the following assertions:
1. Respondent’s <luxilon.com>
domain name is identical to Complainant’s LUXILON mark.
2. Respondent does not have any rights or
legitimate interests in the <luxilon.com> domain name.
3. Respondent registered and used the <luxilon.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Luxilon Sports NV, is a Belgian company based in Antwerp that was established
in 1959. Complainant has become an
International leader in manufacture ring filaments. Complainant’s products involve the manufacture of high tech
strings for racquet sports and are also used in the aerospace and medical
industries.
Complainant owns
two Benelux trademark registrations (Reg. No. 456355, issued January 5, 1989
and Reg. No. 0707568, issued May 2, 2002) and one WIPO registration (Reg. No.
539210, issued May 23, 1989 for Austria, Switzerland, Germany, Spain, France
and Italy) in connection with plastic filaments and sports articles for tennis
and other sporting goods.
Respondent
registered the disputed domain name on November 9, 1999.
Complainant
initially contacted Respondent on December 6, 2004 to notify Respondent of
Complainant’s rights in the mark and request that Respondent transfer the
domain name to Complainant. At this
time, Respondent’s domain name did not contain any Internet content, and it has
not contained any Internet content in the six months since then. As of today, the disputed domain name
redirects Internet users to a search engine website containing links to various
subjects such as mortgages and personal finance.
Respondent has
declined to transfer the domain name to Complainant despite several requests,
notices of Complainant’s trademark rights and offers to pay Respondent a
reasonable sum covering registration fees for the domain name. Respondent has demanded various sums of up
to 30,000 Euros in exchange for the transfer of the domain name.
Respondent has
also acknowledged that it’s intention is to use the domain name as part of a
planned Internet “world tennis portal.”
Respondent also owns registrations for the <tenis.net> and
<tenisdirecto.com> domain names.
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. 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.").
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 that it has rights in the LUXILON mark through WIPO and Benelux
registrations and through continuous use of the mark in commerce for the last
forty-six years. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. The respondent has the
burden of refuting this assumption); see also KCTS Television Inc. v.
Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does
not matter for the purpose of paragraph 4(a)(i) of the Policy whether the
complainant’s mark is registered in a country other than that of the
respondent’s place of business);.
The <luxilon.com>
domain name registered by Respondent is identical to Complainant’s LUXILON
mark because the only difference between the two is the addition of the generic
top-level domain “.com.” The addition
of the generic top level domain is insufficient to distinguish the domain name
from Complainant’s LUXILON trademark. See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr.
27, 2000) (holding that the domain name <robohelp.com> is identical to
the complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"); see also Gardline Surveys
Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302
(Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>,
is identical to Complainant's KIOTI mark because adding a top-level domain name
is irrelevant for purposes of Policy ¶ 4(a)(i).”); see also Nev. State Bank
v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003)
(“It has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
established its rights in the LUXILON mark and alleges that Respondent has no
such rights or legitimate interests in the disputed domain name. The burden shifts to Respondent to show that
it does have rights or legitimate interests once Complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii).
Due to Respondent’s failure to respond to the Complaint, the Panel
assumes that Respondent lacks rights and legitimate interests in the disputed
domain name. See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to
respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by the
complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist).
Respondent is
using the disputed domain name to redirect Internet users to a search engine
website where Respondent presumably receives click-through fees for redirecting
Internet traffic to the various commercial links. The Panel finds that Respondent’s commercial use of the disputed
domain name, by receiving click-through fees for redirecting Internet users to
a pay-per-click website, is not a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See FAO Schwarz v.
Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or
legitimate interests in the domain names <faoscwartz.com>,
<foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com>
where Respondent was using these domain names to link to an advertising
website); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb.
Forum May 12, 2003) (finding that the respondent did not have rights or
legitimate interests in a domain name that used the complainant’s mark and
redirected Internet users to website that pays domain name registrants for
referring those users to its search engine and pop-up advertisements); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
Furthermore,
Complainant asserts that Respondent is not commonly known by the <luxilon.com>
domain name pursuant to Policy 4(c)(ii) of the Policy. Nothing in the record clearly contradicts
this assertion. Thus, the Panel finds
Respondent did not establish rights or legitimate interests in the dispute
domain name under this element. See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
offered to sell the disputed domain name to Complainant for a price above and
beyond the expenses Respondent acquired in the process of registering the
domain name. The Panel finds
Respondent’s offer to sell the disputed domain name as evidence of bad faith
registration pursuant to Policy ¶ 4(a)(iii).
See Little Six, Inc v.
Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the
respondent's offer to sell the domain name at issue to the complainant was
evidence of bad faith); see also Booz-Allen
& Hamilton Inc. v. Servability Ltd,
D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where the respondent, a
domain name dealer, rejected the complainant’s nominal offer of the domain in
lieu of greater consideration); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3,
2000) (finding bad faith where Respondent offered the domain names for sale); see
also Am. Online, Inc. v. Avrasya
Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000)
(finding bad faith where the respondent offered domain names for sale).
The Panel infers
that Respondent is receiving click-through fees for using a domain name that is
identical to Complainant’s mark to divert Internet users to a search engine
website. Therefore, the Panel finds
that Respondent’s commercial use of the disputed domain name constitutes bad
faith registration and use pursuant to Policy
¶ 4(b)(iv). See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent
profits from its diversionary use of the complainant's mark when the domain
name resolves to commercial websites and the respondent fails to contest the
Complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also Qwest Communications
Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003)
(“Respondent’s attempt to commercially benefit from the misleading domain name
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <luxilon.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
July 13, 2005
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