National Arbitration Forum

DECISION

Reebok International Limited v. Shaydon Santos

Claim Number: FA0509000565685

PARTIES

Complainant is Reebok International Limited (“Complainant”), represented by Brian M. Davis, of Alston & Bird, LLP, Bank of America Plaza, 101 S. Tryon Street, Suite 4000, Charlotte, NC, 28280-4000. Respondent is Shaydon Santos (“Respondent”), 700 S. Saratoga Ave., o104, San Jose, CA 95129.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rbklacrosse.com>, registered with Schlund + Partner AG.

PANEL

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 22, 2005.

On September 22, 2005, Schlund + Partner AG confirmed by e-mail to the National Arbitration Forum that the <rbklacrosse.com> domain name is registered with Schlund + Partner AG and that Respondent is the current registrant of the name. Schlund + Partner AG has verified that Respondent is bound by the Schlund + Partner AG 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 September 27, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 17, 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@rbklacrosse.com by e-mail.

A timely Response was received and determined to be complete on October 13, 2005.

On December 1, 2005 Complainant filed an additional submission. It was received in a timely manner according to Supplemental Rule 7. Its contents were duly considered by the Panel as will hereinafter appear.

On December 7, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <rbklacrosse.com> domain name is confusingly similar to Complainant’s RBK mark and <rbk.com> domain name.

2. Respondent has no rights or legitimate interest in respect of said domain name.

3. Respondent registered and used the domain name in bad faith.

B. Respondent

Respondent admits that its domain name, <rbklacrosse.com>, contains Complainant’s RBK mark but denies that it is confusing prospective customers. Only 134 users had visited <rbklacrosse.com> by the time the Response was filed. This amounted to less than two people per day. Further, Respondent maintains that when it decided to manufacture Rude Boys lacrosse apparel for kids the RBKLACROSSE name was a natural extension of Respondent’s “RB Lacrosse” name, which has been in use since 2001. Respondent denies that it has acted in bad faith.

Respondent says Complainant has never advertised lacrosse specific products, manufactured lacrosse specific products or been remotely associated with the sport of lacrosse. Complainant’s website, <rbk.com>, has no mention anywhere of the sport of Lacrosse.

Respondent notes Complainant has adopted and utilized marks that combine its RBK mark with sports terms, such as “RBK Running” and “RBK Basketball,” and has registered the domain names <rbkrunning.com> and <rbkbasketball.com>, but Respondent opines “for a company that insists that these domain names and designations ‘have a distinctive quality and have acquired special and particular significance and very valuable goodwill as identifying Reebok and its goods, so that when members of the public in the United States and elsewhere see or hear such marks they automatically think of Reebok’ they have yet to acquire domains such as <rbkbaseball.com>, <rbkvolleyball.com>, and countless other sports terms all superseded by the RBK mark.”

C. Additional Submissions

Complainant timely filed an Additional Submission wherein he points out that Respondent’s Response indicates that Respondent has not used the mark RBK or

RBKLACROSSE. Respondent also admits knowing that Complainant frequently

uses its RBK mark in combination with sports terms including “running” and “basketball.” In addition, Complainant also noted that on the day the Response was filed seven domain names combining the RBK mark with various sports terms, including baseball and volleyball, were registered in Respondent’s home town in Respondent’s mother’s name, further evidencing Respondent’s bad faith.

FINDINGS

The Reebok corporate organization is one of the largest and best known footwear and apparel manufacturers in the world. For several years, that organization has exclusively used the trademark RBK, and variations thereof, to identify its goods. The domain name <rbk.com> has also been used in conjunction with such goods. Reebok has utilized the RBK mark extensively in association with the promotion of various goods, including sports equipment, footwear and apparel, in the U.S. and internationally. Reebok Limited owns numerous registrations and applications of the RBK mark throughout the world, including U.S. Trademark Registration No. 2,384,091, issued September 5, 2000.

Reebok’s goods have been and are being advertised and promoted extensively under the RBK mark worldwide in various forms of media, including the Internet. Reebok Ltd. also owns the domain name <rbk.com>, which domain name is used to direct Internet users to Reebok’s website. That website is an important part of Reebok’s marketing program and is used to promote Reebok’s goods worldwide. In advertising and promoting its goods to the public under its proprietary RBK mark and domain name, Reebok has spent tens of millions of dollars annually. Further, Reebok has adopted and utilized marks that combine its RBK mark with sports terms, such as RBK RUNNING, RBK HOCKEY, and RBK SOCCER, and has registered several RBK formative domain names, including <rbkrunning.com>, <rbkhockey.com>, <rbkfootball.com>, and <rbkbasketball.com>. By reason of the adoption and extensive use of the RBK mark and related designations, the RBK mark and such designations have a distinctive quality and have acquired special and particular significance and very valuable goodwill as identifying Reebok and its goods, so that when members of the public in the United States and elsewhere see or hear such marks, they automatically think of Reebok

Respondent registered the <rbklacrosse.com> domain name on June 22, 2005. Respondent is using this domain name to direct individuals to Respondent’s website that promotes a lacrosse magazine. This website is sponsored by, and contains links to, THE LAX SHACK, a retail seller of apparel and lacrosse equipment. This website is not affiliated with, sponsored or approved by Reebok.

Rude boys Lacrosse USA, Inc. holds the trademark RUDE BOYS LACROSSE—US Trademark number is 78550221 and the filing date is January 19, 2005. Rude Boys Lacrosse is commonly known in the lacrosse industry as RB Lacrosse. Rude Boys Lacrosse has spent thousands of dollars annually promoting the RB Lacrosse logo in various National Lacrosse League (NLL) arenas as well as across Canada and the United States at minor/amateur lacrosse levels.

Respondent Shaydon Santos owns the Domain <rbklacrosse.com>, which was purchased January 20, 2005. Shaydon Santos also owns the Domain <rudeboyslacrosse.com>, a website with full e-commerce capabilities where all RB Lacrosse merchandise and NLL Licensed apparel is sold. It was purchased in February 2001.

Rude Boys Lacrosse’s main website, <rudeboyslacrosse.com>, is geared towards a very mature audience and a new age appropriate website was needed to help market Rude Boys Kids lacrosse apparel. The <rbklacrosse.com> domain name was purchased to help market a new line of Rude Boys Lacrosse apparel directed towards a younger demographic. RB “Kids” Lacrosse is a natural extension of the RB Lacrosse name. Although <rbklacrosse.com> didn’t have its own website, a website was planned to help promote “RB Kids Lacrosse” products in time for the 2006 spring purchasing season.

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.

Identical and/or Confusingly Similar

Complainant owns a United States Patent and Trademark Office (“USPTO”) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i). 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 the mark.”). Respondent had actual and/or constructive notice of Complainant’s mark as well as Complainant’s world wide involvement in sports of all kinds.

Respondent had actual and/or constructive notice of Complainant’s mark. Respondent admits that its domain name incorporates Complainant’s RBK mark. Adding the word “lacrosse” to Complainant’s mark does not significantly distinguish the domain name from the mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

The Panel finds that Policy ¶ 4(a)(i) has been fulfilled.

Rights or Legitimate Interests

Respondent has no preexisting rights in either “RBK” or “RBK LACROSSE” as a trademark, service mark, or trade name. Hence, it may be presumed that Respondent has no rights or legitimate interests in <rbklacrosse.com> as a domain name. See Arthur Guiness Son & Co. (Dublin) Limited v. O’Donnell, D2000-1710 (WIPO Feb. 27, 2001) (holding that the respondents had no legitimate interests in the domain name guinessdraught.org, as members of the public would assume an association between respondents’ proposed website and complainant).

Respondent is using Complainant’s athletic equipment mark to sell Respondent’s lacrosse gear. Appropriating one’s mark to sell the same type of goods is not a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).

The Panel finds that Policy ¶ 4(a)(ii) has been fulfilled.

Registration and Use in Bad Faith

Although Respondent claims to be known as “RBK Lacrosse,” it is not commonly known by the disputed domain name. See Gestmusic Endemol, S.A. v. operaciontriunfo.us, FA 214337 (Nat. Arb. Forum Jan. 14, 2004) (“Though Respondent’s WHOIS information lists Respondent’s name as ‘o. operaciontriunfo.us’ and organization as ‘operaciontriunfo.us,’ there is no evidence before the Panel that Respondent was actually commonly known by the [<operaciontriunfo.us>] domain name.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . , there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”).

Complainant avers that it has used the RBK mark in various sports markets by appending “RBK” to the names of sports, such as RBK RUNNING, RBK SOCCER, and RBK HOCKEY. Because of this practice, Complainant’s customers are likely to be confused as to source when they find Respondent’s <rbklacrosse.com> domain name. Because Respondent is selling its goods at the resultant web page, Respondent is creating confusion for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

The Response noted that Complainant has not registered every domain name that combines the RBK mark with sports terms and specifically mentioned the availability of the domain names <rbkbaseball.com> and <rbkvolleyball.com>. The attachments to the Response also indicate that other RBK domain names, including <rbkgolf,com> and <rbkski,com>, were available for registration. On the day the Response was filed (October 13, 2005), the domain names <rbkbaseball.com>, <rbkvolleyball.com>, <rbkgolf.com>, <rbkski.com>, <rbktennis.com>, <rbksurf.com>, and <rbkskate.com> were registered by Mary Santos in Respondent’s home town. Complainant’s subsequent investigation established that Mary Santos is the mother of Respondent Shaydon Santos.

Respondents acquisition of multiple domain names, either directly or through a relative, that combine Complainant’s RBK mark with various sports terms, despite Respondent’s admitted knowledge of Complainant’s rights to the RBK mark and use of the mark with various sports terms is strong evidence of bad faith use and registration of the subject domain name pursuant to Section 4(b)(i) of the UDRP. See Yahoo! Inc. v. Gianluca Deiana, FA 339579 (Nat. Arb. Forum November 22, 2004) (Registrant’s registration of ten domain names that were similar to the Yahoo mark demonstrated a pattern of registering domain names in bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been fulfilled.

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <rbklacrosse.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist
Dated: December 21, 2005

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