Houston McLane Company, Inc. d/b/a The Houston Astros Baseball Club v. Nevis Domains LLC
Claim Number: FA0602000650935
Complainant is Houston McLane Company, Inc. d/b/a The Houston Astros 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 Nevis Domains LLC. (“Respondent”), 222-3 Main Street, Charlestown, Nevis 0000, KN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <houstonastros.com>, registered with Moniker Online Services, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2006.
On February 27, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <houstonastros.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 March 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 21, 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@houstonastros.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 Bruce E. Meyerson 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 <houstonastros.com> domain name is identical to Complainant’s HOUSTON ASTROS mark.
2. Respondent does not have any rights or legitimate interests in the <houstonastros.com> domain name.
3. Respondent registered and used the <houstonastros.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Houston McLane Company, Inc., owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HOUSTON ASTROS mark. Complainant first registered the HOUSTON ASTROS mark with the USPTO on April 19, 1988 (Reg. No. 1,485,610).
Complainant or its predecessors have owned and operated the Houston Astros, a Major League Baseball club, for several decades. Complainant has utilized the HOUSTON ASTROS mark in connection with the operation of its professional sports team, as well as in the marketing and licensing of goods and services bearing the HOUSTON ASTROS mark. Complainant licenses its HOUSTON ASTROS mark through MLB Advanced Media, L.P. (“MLBAM”), the Internet and interactive media company of Major League Baseball, and Major League Baseball Properties, Inc. (“MLBP”), the licensing agent of the trademarks of Major League Baseball clubs. Through its relationships with MLBAM and MLBP, Complainant holds domain name registrations for a several domain names bearing the HOUSTON ASTROS mark or variations of the HOUSTON ASTROS mark. A majority of these domain names connect directly to the “official website” of Complainant, in connection with MLBAM, located at the <houston.astros.mlb.com> domain name. Complainant uses the <houston.astros.mlb.com> to offer licensed merchandise of the club, to provide information about the organization and to sell tickets to Houston Astros baseball games.
Respondent registered the <houstonastros.com> domain name on March 14, 1998. Respondent is using the disputed domain name to operate a website offering links to third-party commercial websites selling tickets to Houston Astros baseball games, as well as merchandise bearing the HOUSTON ASTROS mark 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 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. 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’s trademark registrations of its HOUSTON ASTROS
mark with the USPTO establish Complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i). 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.”).
Complainant also sufficiently
demonstrates that Respondent’s <houstonastros.com> domain
name is identical to Complainant’s HOUSTON ASTROS mark. Respondent’s <houstonastros.com>
domain name incorporates Complainant’s HOUSTON ASTROS mark in its entirety,
adding only the generic top-level domain “.com,” while omitting a space between
the words “houston” and “astros.” Prior
panels have held that the addition of a top-level domain such as “.com” is
irrelevant in determining whether a domain name is identical to a complainant’s
mark. 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). Moreover, the omission of a space between
words in a domain name does not negate the identical nature of a domain name to
an established mark. Wembley Nat’l
Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the
domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM
mark). Therefore, the Panel finds that
Respondent’s <houstonastros.com>
domain name is identical to Complainant’s HOUSTON ASTROS mark under Policy ¶
4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially establish that Respondent lacks rights and legitimate interests with respect to the disputed domain name. However, once Complainant demonstrates a prima facie case, the burden of proof then shifts to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. 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).”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on the record to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent uses the <houstonastros.com> domain
name to operate a website providing links to third-party commercial websites
offering tickets to the professional sporting events of Complainant and
merchandise bearing Complainant’s HOUSTON ASTROS mark. In Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003), the respondent registered and used a domain
name that was confusingly similar to the complainant’s mark to divert Internet
users seeking the complainant’s website to the respondent’s website. Consequently, the panel found that the
respondent’s activities did not demonstrate a bona fide offering of
goods or services under Policy ¶ 4(c)(i) and failed to constitute a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). In the present case, Respondent is utilizing a domain name that
is identical to Complainant’s mark to mislead Internet users seeking tickets,
merchandise, or information through Complainant’s registered website to
Respondent’s website. Therefore,
Respondent’s use of the disputed domain name does not constitute a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). TM Acquisition Corp. v. Sign
Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services).
Complainant also asserts that Respondent has never been commonly known by the <houstonastros.com> domain name. There is no evidence in the record to suggest that Respondent is commonly known by the disputed domain name. According to the WHOIS information, Respondent conducts its business under the name “Nevis Domains LLC.” Thus, the evidence does not establish that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Additionally, the distinct nature of Complainant’s HOUSTON ASTROS mark, coupled with Complainant’s established history of trademark registrations in the mark, make it difficult for Respondent to be commonly known by the <houstonastros.com> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”); see also Compaq Info. Techs. Group, L.P. v. Express Tech., Inc., FA 104186 (Nat. Arb. Forum Mar. 13, 2002) (“The Panel finds that due to the distinct nature of Complainant's COMPAQ mark it is not possible for Respondent to be commonly known as <compaqspares.com> pursuant to Policy ¶ 4(c)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <houstonastros.com> domain name uses Complainant’s well-known HOUSTON ASTROS mark to divert Internet users to a website lacking any affiliation with Complainant’s business. The disputed domain name resolves to a website that almost entirely features links to third-party websites offering tickets and merchandise in competition with Complainant. Consequently, the Panel finds that Respondent is using the <houstonastros.com> domain name to attract Internet users for commercial gain by creating a likelihood of confusion between the disputed domain name and Complainant’s mark. Therefore, Respondent’s <houstonastros.com> domain name was registered and is being used in bad faith pursuant to Policy ¶ 4(b)(iv). 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); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Furthermore, Respondent registered and is using the <houstonastros.com>
domain name to operate a
website primarily featuring links to competitors of Complainant’s goods and
services. Such use by Respondent is
indicative of an intent to disrupt the business of Complainant, and constitutes
registration and use of the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(iii). EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); see
also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
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 <houstonastros.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 10, 2006
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