Reebok International Limited v. Motohisa Ohno
Claim Number: FA0507000511463
PARTIES
Complainant is Reebok
International Limited (“Complainant”), represented by Larry C. Jones,
of Alston & Bird, LLP, Bank of America Plaza, 101 S. Tryon Street,
Suite 4000, Charlotte, NC 28280-4000.
Respondent is Motohisa Ohno (“Respondent”), 3-25-1,
Higashi-Toyoda, Hino, Tokyo, 191-0052 JP.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <reebok.net>, registered with Enom, Inc..
PANEL
The undersigned
certifies that she has acted independently and impartially and to the best of
her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq. as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum electronically on July 11, 2005;
the National Arbitration Forum received a hard copy of the Complaint on July
13, 2005. On July 14, 2005, the National Arbitration Forum informed Complainant
that the Complaint was deficient, in that it did not list the Respondent’s
address and telephone number as currently listed in the Registrar’s WHOIS
database. Complainant filed an Amended Complaint, listing Respondent’s current
address and telephone number, on July 14, 2005, and the Amended Complaint was
deemed sufficient.
On July 11, 2005, Enom,
Inc. confirmed by e-mail to the National Arbitration Forum that the domain name
<reebok.net> is registered with Enom, Inc. and that the 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-name
disputes brought by third
parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On July 14, 2005, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of August 3, 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@reebok.net
by e-mail.
Respondent filed an
electronic Response on August 1, 2005; however, the Response was not submitted
in hard copy, and therefore, was not in compliance with ICANN Rule #5(a)
through #5(b). Nevertheless, the Panel has ruled to accept Respondent’s timely,
but deficient Response, because not doing so, would exact a harsh remedy,
inconsistent with the requirements of due process. See Strum v. Nordic Net
Exch. AB, FA 102843 (Nat. Arb. Forum (Feb. 21, 2002) (“[R]uling a Response
inadmissible because of formal deficiencies would be an extreme remedy not
consistent with the basic principles of due process...”); see also J.W.
Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct.
17, 2003) (finding that where Respondent submitted a timely Response
electronically, but failed to submit a hard copy of the Response on time,
“[t]he Panel is of the view that given the technical nature of the breach and
the need to resolve the real dispute between the parties that this submission
should be allowed and given due weight”).
On August 10, 2005,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Carol Stoner,
Esq. as Panelist.
RELIEF SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the
following assertions:
1. Respondent’s <reebok.net>
domain name is confusingly similar to Complainant’s REEBOK mark.
2. Respondent does not have any rights or
legitimate interests in the <reebok.net> domain name.
3. Respondent registered and used the <reebok.net>
domain name in bad faith.
B. Respondent makes the
following assertions:
1. Respondent doesn’t deny that the domain name
<reebok.net> is identical to the trademark REEBOK cited in the
Complaint.
2.
Respondent
registered the domain name over three years ago because “It became available
for registration, and that is why it has rights to own the domain name.”
Respondent set the domain to a parking service (Domain Spa) and “the contents
are automatically assigned.” Respondent states that “It doesn’t matter to him,
anyway, though he is disappointed that the Complainant didn’t contact him.” He
further cited in his defense various considerations (such as contributions to
UNICEF and CD’s) that were exacted in exchange for transfer of disputed domain
names.
3. Respondent does not
admit bad faith in the domain registration. Respondent asserts that Complainant
“could have contacted the previous owner before it re-registered the domain,
and could have contacted him before they spent money for the case.”
FINDINGS
Complainant has sold
various goods, including footwear and apparel, in the United States and
internationally, under the trademark REEBOK since at least as early as
1965. REEBOK owns numerous
registrations with the United States Patent and Trademark Office (“USPTO”) for
the REEBOK mark throughout the world, and several registrations for its REEBOK
mark in Japan, registrants’ listed company of residence (E.g., U.S.
Trademark Reg. No. 1,133,740, issued April 22, 1980, for shoes for use in
athletic sports; and Japanese Reg. No. 2,371,262, issued January 31, 1992, for
footwear and
other goods).
Reebok Ltd. also owns
the domain name <reebok.com> as reflected on the WHOIS database
print-out, such record being created on July 8, 1994. Said domain name is used to direct Internet users to REEBOK’S
website, which is used to promote REEBOK’s goods worldwide.
By reason of the
adoption, use and extensive promotion and advertising under the trade name, and trademark REEBOK and the
domain name <reebok.com>, these designations have acquired
substantial and valuable goodwill. Said designations have also acquired a
special and secondary meaning, so that when members of the public in the United
States, Japan and elsewhere, see or hear such trade name, trademark or domain
name, they automatically think of REEBOK.
Respondent, identified
as Motohisa Ohno, registered the <reebok.net> domain name on February
26, 2002. On June 15, 2005, the domain name <reebok.net> resolved
to a website that prominently featured links to sellers of goods manufactured
by one of REEBOK’S primary competitors, that is ADIDAS. This website is not
affiliated with, nor sponsored by, nor approved by the Complainant,
REEBOK.
DISCUSSION
Paragraph 4(a) of the
Policy requires that the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the 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 asserts that
it has established rights in the REEBOK mark through Registration with the USPTO (Reg. No. 1,133,740 issued April 22,
1980). See Vivendi Universal Games v. XBNETVentures, Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations
establish Complainant’s rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant’s rights in mark.”).
Additionally,
Complainant asserts that Respondent’s <reebok.net> domain name is
identical to Complainant’s REEBOK mark, pursuant to Policy paragraph 4(a)(i),
as the domain name fully
incorporates the mark and merely adds the generic top-level domain “net.” I
concur with the Complainant’s assertion that the name REEBOK, meets the
identical and/or confusingly similar standard set out in the Policy. See
Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30,
2001) (finding that <mysticlake.net> is plainly identical to the
Complainant’s MYSTIC LAKE trademark and servicemark); see also Rollerblade,
Inc. v. McCrady D2000-0429 (WIPO June 25, 2000) (finding that the
top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar.
Further, Respondent does
not contest Paragraph 4(a)(i) of the Policy.
Therefore, the Panel
finds that Complainant has satisfied Policy, Paragraph 4(a)(i).
The Respondent is not
commonly known by the <reebok.net> domain name,
and it has not used the
domain in connection with a bona fide offering of goods and services. See
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Hartford Fire Ins. Co. v.
Webdeal, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that
Respondent had no rights or legitimate interest in domain names because it is
not commonly known by Complainant’s marks and Respondent had not used
the domain names in connection with a bona fide offering of goods and
services for a legitimate noncommercial or fair use).
The website in
issue is a mere portal which features links to a competitor’s site, that is,
ADIDAS, which offers competing goods and services. The Panel rules that such
competing use is not a use in connection with a bona fide offering of
goods or services pursuant to Policy, Paragraph 4(c (i) or a legitimate
noncommercial or fair use pursuant to Policy, Paragraph 4 (c (iii).
See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that the Respondent’s use of the disputed domain
to redirect Internet users to a financial services website, which competed with
the Complainant, was not a bona fide offering of goods and services; see
also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (holding that the Respondent’s appropriation of the
Complainant’s mark to market products that compete with the Complainant’s goods
does not constitute a bona fide offering of goods and services).
The Panel concludes that
Respondent has not established rights or legitimate interests in the disputed
domain name. Accordingly, the Panel finds that Complainant has satisfied
Policy, Paragraph 4(a)(ii).
Complainant argues that
Respondent registered and used the disputed domain name in bad faith, under
Policy, Paragraph 4(b)(iv) as Respondent is using <reebok.net>
domain name to intentionally attract, for commercial gain, Internet users to
its website, by creating a likelihood of confusion with Complainant as to the
source, sponsorship, affiliation or endorsement of its website. Respondent
doesn’t deny that the domain name <reebok.net> is identical to the
trademark REEBOK cited in the Complaint. Such bold-faced use constitutes bad
faith. See G.D. Searle & Co., v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the
domain name in bad faith pursuant to Policy Paragraph 4(b) (iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
Complainant argues that
Respondent’s website features links to sites that compete with the services
Complainant offers. The Panel holds that this use of a confusingly domain name
to offer goods or services that compete with those of Complainant is disruption
and constitutes bad faith use and registration under Policy paragraph 4(b)
(iii). See Disney Enters., Inc. V. Noel, FA 198805 (Nat. Arb. Forum Nov.
11, 2003)
(“Respondent registered
a domain name confusingly similar to Complainant’s mark to divert Internet
users to a competitor’s website. It is
a reasonable inference that Respondent’s purpose of registration and use was to
either disrupt or create confusion for Complainant’s business in bad faith
pursuant to Policy Paragraphs 4(b)(iii) and (iv).”).
Furthermore, the Panel
finds that the Respondent registered the disputed domain name with actual or
constructive knowledge of Complainant’s rights in the REEBOK mark due to
Complainant’s registration of the mark with the USPTO, for as Panel cited
above, Respondent does not deny that
cited domain name is identical to the trademark REEBOK. The Panel also infers,
from Respondent’s recitations of considerations exacted from other disputed
domain holders, in exchange for transfer of name; and his cited disappointment
from REEBOK’s failure to contact it; that Respondent was a cybersquatter, as
well as a cyberpirate. That is, its initial registration was motivated by the
possible resale of the domain name <reebok.net> for ransom to its’
rightful owner. This registration is evidence of bad faith registration and use
pursuant to Policy, Paragraph 4(a) (iii).
See Samsonite Corp. v. Colony Holding, FA 94313 (Nat.Arb. Forum
Apr. 17, 2000) (finding that evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration.); see
also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”).
The Panel finds that
Complainant has satisfied Policy, Paragraph
4(a)(iii).
DECISION
Having established all
three elements required under the ICANN Policy, the Panel concludes that relief
shall be GRANTED.
Accordingly, it is
Ordered that the <reebok.net> domain name be TRANSFERRED
from Respondent to Complainant.
Carol Stoner, Esq.,
Panelist
Dated: August 23, 2005
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