Shimano Inc. v Eduardo Vivas
Claim Number: FA0509000563648
PARTIES
Complainant is Shimano Inc. (“Complainant”),
represented by Rod S. Berman, of Jeffer, Mangels, Butler & Marmaro, LLP, 1900 Avenue of the Stars, Seventh Floor, Los Angeles, CA 90067. Respondent is Eduardo Vivas (“Respondent”), 260 SW 6th Street, Miami,
FL 33130.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shimano-tiagra.com>, <shimano-calcutta.com>, <shimano-baitrunner.com>, <shimano-curado.com>, <shimano-spheros.com>, <shimano-sedona.com>, <shimano-symetre.com>, <shimano-stradic.com>, <shimano-tekota.com>, <shimano-thunnus.com>, <shimano-torium.com>
and <shimano-trinidad.com>, registered with Go Daddy Software, Inc.
PANEL
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.
Joel Grossman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 16, 2005; the National Arbitration Forum received a
hard copy of the Complaint on September 19, 2005.
On September 16, 2005, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <shimano-tiagra.com>, <shimano-calcutta.com>, <shimano-baitrunner.com>, <shimano-curado.com>, <shimano-spheros.com>, <shimano-sedona.com>, <shimano-symetre.com>, <shimano-stradic.com>, <shimano-tekota.com>, <shimano-thunnus.com>, <shimano-torium.com>
and <shimano-trinidad.com> domain names are registered with Go
Daddy Software, Inc. and that the Respondent is the current registrant of the
name. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, 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 October 11, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 31, 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@shimano-tiagra.com,
postmaster@shimano-calcutta.com, postmaster@shimano-baitrunner.com,
postmaster@shimano-curado.com, postmaster@shimano-spheros.com,
postmaster@shimano-sedona.com, postmaster@shimano-symetre.com,
postmaster@shimano-stradic.com, postmaster@shimano-tekota.com,
postmaster@shimano-thunnus.com, postmaster@shimano-torium.com and
postmaster@shimano-trinidad.com by e-mail.
The Present case was stayed on September 20, 2005. Complaint was notified of the stay due to a
natural disaster in the region of Respondent’s address on September 21, 2005.
The case was recommenced on October 20, 2005 and a deficient Response
was received from Respondent on October 20, 2005.
On October 27, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel Grossman as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name, be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant owns and has numerous registrations of the mark SHIMANO. Complainant also has registered the marks CALCUTTA, BAITRUNNER,
CURADO, SPHEROS, SEDONA, SYMETRE, STRADIC, TEKOTA, THUNNUS, TORIUM and
TRINIDAD. Complainant has also been actively using the domain name www.shimano.com, and related domain names
ending with “.us” and “.ca.” It has
used the name and mark SHIMANO to identify its sports equipment in the United
States for nearly 40 years. Complainant asserts that the Respondent’s domain
names merely combine the SHIMANO mark with one of its other marks, such as
Trinidad, to create a domain name such as <shimano-trinidad.com>. The addition of the “.com” does not give
Respondent the right to use these marks. Complainant asserts that Respondent’s
domain names are confusingly similar to its marks, that Respondent has no
rights or legitimate interests in the domain names, and that the names were
registered in bad faith. Complainant therefore seeks an order that these names
be transferred to it.
B. Respondent
Respondent does not contest Complainant’s request that the domain names
be transferred to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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 the domain names are
identical and confusingly similar to its marks. Respondent does not contest
this assertion. Complainant has shown that the domain names wholly incorporate
its marks, with nothing additional other than “.com.” It is clear that the
domain names are in fact identical and confusingly similar to the marks.
Complainant asserts that Respondent has no
rights or legitimate interests in the domain names, and Respondent does not
contest this assertion. Given that Respondent has chosen not to contest this
finding, the Panel finds that Respondent has no rights or legitimate interests
in the domain names.
Complainant asserts that the domain names
were registered and are being used in bad faith, and Respondent does not
contest this assertion. Given that Respondent has chosen not to contest this
issue, the Panel concludes that the domain names were registered and are being
used in bad faith.
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 <shimano-tiagra.com>, <shimano-calcutta.com>, <shimano-baitrunner.com>, <shimano-curado.com>, <shimano-spheros.com>, <shimano-sedona.com>, <shimano-symetre.com>, <shimano-stradic.com>, <shimano-tekota.com>, <shimano-thunnus.com>, <shimano-torium.com>
and <shimano-trinidad.com> domain names be TRANSFERRED
from Respondent to Complainant.
Joel Grossman, Panelist
Dated: November 8, 2005
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