Chicago White Sox, Ltd. d/b/a The Chicago White Sox Baseball Club v. Hong Kong Names LLC.
Claim Number: FA0602000642531
Complainant is Chicago White Sox, Ltd. d/b/a The Chicago White Sox Baseball Club (“Complainant”), represented by Lee M. Goldsmith of MLB Advanced Media, L.P., 75 Ninth Avenue, 5th Floor, New York, NY, 10011. Respondent is Hong Kong Names LLC. (“Respondent”), Room 2890, 14/G Shanghai Investment Building, Hong Kong, II, 00000 Hong Kong.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <chicagowhitesox.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 10, 2006; the National Arbitration Forum received a hard copy of the Complaint February 13, 2006.
On February 21, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <chicagowhitesox.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has 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 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 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@chicagowhitesox.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 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The disputed domain name that Respondent registered, <chicagowhitesox.com>, is identical to Complainant’s CHICAGO WHITE SOX mark.
2. Respondent has no rights to or legitimate interests in the <chicagowhitesox.com> domain name.
3. Respondent registered and used the <chicagowhitesox.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Chicago White Sox, Ltd., is a professional baseball team that is known throughout the world. Complainant has won three World Series championships, including the 2005 World Series championship and numerous American League pennants and division titles. Many famous Major League Baseball players played for Complainant over the years, including Luke Appling, Carlton Fisk, Frank Thomas and Luis Aparicio.
Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the CHICAGO WHITE SOX mark (Reg. No. 1,529,600 issued March 14, 1989).
Respondent registered the disputed domain name March 10, 1998. Respondent is using the disputed domain name to redirect Internet users to Respondent’s commercial website that purports to sell Complainant’s merchandise and game tickets without Complainant’s authorization.
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 will draw such inferences as the Panel 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 Complainant to 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 established using extrinsic proof in this
proceeding that it has legal rights in the CHICAGO WHITE SOX mark through
registration of the mark with the USPTO.
See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also Innomed Tech., 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.”); see also 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.”).
The
disputed domain name that Respondent registered, <chicagowhitesox.com>, is identical to Complainant’s CHICAGO
WHITE SOX mark because
Respondent’s domain name incorporates Complainant’s mark in its entirety and
merely adds the generic top-level domain “.com.” The Panel finds that such a minor addition to Complainant’s
registered mark does not sufficiently differentiate the identical aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Porto Chico
Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the
panel should resolve whether a mark is identical or confusingly similar “by
comparing the trademark and the disputed domain name, without regard to the
circumstances under which either may be used”); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO
Nov. 6, 2000) (finding that the domain name <nike.net> is identical to
the complainant’s famous NIKE mark); 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.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety in the disputed domain name. Complainant alleged that Respondent has no such rights to or legitimate interests in the <chicagowhitesox.com> mark and domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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 does not have rights or legitimate interests 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 <chicagowhitesox.com> domain name to
redirect Internet users to Respondent’s commercial website that purports to
sell Complainant’s merchandise and game tickets without Complainant’s
authorization. Respondent’s use of a
domain name that is identical to Complainant’s CHICAGO WHITE SOX mark to
redirect Internet users interested in Complainant’s products to a website that
offers Complainant’s merchandise and game tickets without Complainant’s
authorization is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See G.D. Searle & Co. v.
Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the
respondent’s use of the disputed domain name to solicit pharmaceutical orders
without a license or authorization from the complainant does not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i)); see also Chanel, Inc. v. Cologne Zone, D2000-1809
(WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the
complainant’s perfume, as well as other brands of perfume, is not bona fide
use); see also Nat’l Collegiate
Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that
domain names used to sell the complainant’s goods without the complainant’s
authority, as well as others’ goods, is not bona fide use).
Moreover, Respondent offered no evidence and no evidence in the record suggests that Respondent is commonly known by the <chicagowhitesox.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <chicagowhitesox.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent was not commonly known by the disputed domain name and was not using the domain name in connection with a legitimate or fair use).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith in registering and using a domain name containing Complainant’s mark in its entirety without authorization to do so. The <chicagowhitesox.com> domain name resolves to Respondent’s commercial website that purports to sell Complainant’s merchandise and game tickets without Complainant’s authorization. Additionally, Respondent’s use of Complainant’s distinctive CHICAGO WHITE SOX mark in the domain name creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s website for Respondent’s commercial gain. The Panel finds that this is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chicagowhitesox.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 10, 2006
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