United States Polo Association v. Chris Co., Inc. c/o
Chris Lipper
Claim Number:
FA0602000640248
Complainant
is United States Polo Association (“Complainant”), represented by Gerald
J. Ferguson, of Baker & Hostetler LLP, 666 Fifth Avenue, New
York, NY 10103. Respondent is Chris
Co., Inc. c/o Chris Lipper (“Respondent”), 35 Buckley Hill Road,
Morristown, NJ 07960.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <uspoloassn.com>,
registered with Register.com.
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.
Hon. Ralpah Yachnin as Panelist.
Complainant submitted a Complaint to the National
Arbitration Forum electronically on February 8, 2006; the National Arbitration
Forum received a hard copy of the Complaint on February 10, 2006.
On February 9, 2006, Register.com confirmed by e-mail
to the National Arbitration Forum that the <uspoloassn.com> domain
name is registered with Register.com and that Respondent is the current
registrant of the name. Register.com
has verified that Respondent is bound by the Register.com 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 February 13, 2006, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of March 6, 2006 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@uspoloassn.com by e-mail.
Having received no response from Respondent, the
National Arbitration Forum transmitted to the parties a Notification of
Respondent Default.
On March 14, 2006, pursuant to Complainant's request
to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Hon. Ralph Yachnin 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 <uspoloassn.com> domain name
is identical to Complainant’s U.S. POLO ASSN. mark.
2. Respondent does not have any rights or legitimate
interests in the <uspoloassn.com> domain name.
3. Respondent registered and used the <uspoloassn.com>
domain name in bad faith.
B. Respondent
failed to submit a Response in this proceeding.
Since
1890, Complainant, United States Polo Association, has been the governing body
for the sport of Polo in the United States and Canada. Complainant has continuously and extensively
used the UNITED STATES POLO ASSOCIATION mark and its abbreviated U.S. POLO
ASSN. mark in connection with the sport of Polo since at least 1924. In addition to promulgating rules and
scheduling tournaments for the sport, Complainant also sells a wide variety of
merchandise featuring the marks, including jewelry, clothing, backpacks,
jackets, footwear, and calendars.
Complainant uses the royalties from this merchandise, which exceed $1
million per year, to fund its Polo programs throughout North America.
Complainant
has registered the U.S. POLO ASSN. mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,734,980 filed February 6, 1995). Complainant also holds trademark
registrations with the USPTO for the UNITED STATES POLO ASSOCIATION (Reg. No.
1,804,895 issued November 16, 1993; Reg. No. 2,147,956 issued March 31, 1998)
and U.S. POLO ASSOCIATION FOUNDED 1890 (Reg. No. 2,270,317 issued August 17,
1999; Reg. No. 2,273,469 issued August 31, 1999) marks.
Respondent
registered the <uspoloassn.com> domain name on March 14,
2003. Respondent’s domain name resolves
to <chrisco.com>, a website selling temporary tattoos and
accessories. When Complainant contacted
Respondent regarding the domain name, Respondent asserted that it had rights to
the domain name because one of Complainant’s licensees, Jordache Ltd., owed it
money. At one time, Respondent was
provided packaging materials to Jordache, but it has never been an authorized
reseller of Complainant’s merchandise.
Upon Complainant’s request to transfer the domain name and compensate
Respondent for its out-of-pocket costs, Respondent refused and stated that it
would sell the domain name registration to the highest bidder because the
domain name was more valuable than Complainant’s offer.
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 rights to the U.S. POLO ASSN. mark by registering the mark with
the USPTO. 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.”). Complainant
filed a trademark registration for the U.S. POLO ASSN. mark with the USPTO on
February 6, 1995 (Reg. No. 2,734,980).
As a result, Complainant sufficiently demonstrates rights in the mark
prior to Respondent’s registration of the <uspoloassn.com>
domain name on March 14, 2003. See Thompson
v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s
trademark application was subsequently approved by the U.S. Patent and
Trademark Office, the relevant date for showing ‘rights’ in the mark for the
purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”); see
also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002)
(holding that the effective date of Complainant’s trademark rights date back to
the application’s filing date)
Respondent’s <uspoloassn.com> domain name is
identical to Complainant’s U.S. POLO ASSN. mark because it contains the entire
mark and merely eliminates the periods and spaces in the mark. Panels have held that the elimination of
punctuation and spaces does not distinguish a domain name from a complainant’s
mark. See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name
<croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES
trademark); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA
94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not
significant in determining the similarity of a domain name and mark). Therefore, Respondent’s domain name is
identical to Complainant’s U.S. POLO ASSN. mark.
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent lacks rights and legitimate interests in the <uspoloassn.com>
domain name. Complainant must first
make a prima facie case in support of its allegations, and then the
burden shifts to Respondent to show it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See
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); see also 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).”).
Respondent’s
failure to answer the Complaint raises a presumption that Respondent has no
rights or legitimate interests in the <uspoloassn.com> name. See Branco do Brasil S.A. v. Sync Tech.,
D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested
the allegation . . . that the Respondent lacks any rights or legitimate
interests in the domain name. The Panel
thus assumes that there was no other reason for the Respondent having
registered <bancodobrasil.com> but the presumably known existence of the
Complainant´s mark BANCO DO BRASIL”); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent
has registered the domain name under the name “Chris Co., Inc. c/o Chris
Lipper,” and there is no other evidence in the record suggesting that Respondent
is commonly known by the <uspoloassn.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the <uspoloassn.com> domain name
pursuant to Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be
strong evidence that Respondent is commonly known by the disputed domain name
in order to find that Respondent has rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not
come forward with any proof to establish that it is commonly known as
CELEBREXRX or <celebrexrx.com>.”); see also
Am. W. Airlines, Inc. v. Paik, FA 206396
(Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain
name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>] domain
name.”).
Furthermore,
Respondent’s <uspoloassn.com> domain name, which is confusingly
similar to Complainant’s U.S. POLO ASSN. mark, resolves to a third-party
website, <chrisco.com>, which sells goods unrelated to Complainant. In Seiko
Kabushiki Kaisha v. CS into Tech, FA 198795
(Nat. Arb. Forum Dec. 6, 2003), the respondent registered <seiko.net>,
which was identical to the complainant’s SEIKO mark, and was redirecting
Internet users to a third-party website unrelated to the mark. The panel stated, “Diverting customers, who
are looking for products relating to the famous SEIKO mark, to a website
unrelated to the mark is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).” Therefore, Respondent’s
use of the disputed domain name to intentionally divert Internet users seeking
Complainant’s products and services to an unrelated website for its own
commercial gain does not constitute a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert
Internet users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is using the <uspoloassn.com> domain name, which is identical to
Complainant’s U.S. POLO ASSN. mark, to redirect Internet users seeking
Complainant’s products and services to an unrelated website selling temporary
tattoos. Respondent likely receives
referral fees for each consumer it diverts to this website and has asserted in
e-mails to Complainant that it knows the domain name is valuable. Therefore, Respondent is taking advantage of
the confusing similarity between Respondent’s domain name and Complainant’s
U.S. POLO ASSN. mark, and profiting from the goodwill associated with the
mark. Use of the disputed domain name
for this purpose is indicative of bad faith registration and use under Policy ¶
4(b)(iv). See Perot Sys. Corp. v.
Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with the complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v.
Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used
the complainant’s well-known mark to attract users to the respondent's
website).
Respondent’s
offer to sell the <uspoloassn.com> domain name to the highest
bidder also provides evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(i). Upon Complainant’s
offer to compensate Respondent for its out-of-pocket costs, Respondent told
Complainant that the domain name was too valuable and that it would sell to the
highest bidder. Panels have held that
offers to sell a domain name to the trademark holder for a price in excess of
out-of-pocket costs constitutes bad faith registration and use. See 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 World
Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that the respondent used the domain name in bad faith because he
offered to sell the domain name for valuable consideration in excess of any
out-of-pocket costs).
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 <uspoloassn.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March
28, 2006
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