Shimano, Inc. v. Les Garbis
Claim Number: FA0607000755418
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 Les Garbis (“Respondent”), 82-6174 Kololeke PL, Captain Cook, HI 96704.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <newshimano.com>, registered with Enom, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2006.
On July 20, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <newshimano.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 July 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 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@newshimano.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 23, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <newshimano.com> domain name is confusingly similar to Complainant’s SHIMANO mark.
2. Respondent does not have any rights or legitimate interests in the <newshimano.com> domain name.
3. Respondent registered and used the <newshimano.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shimano, Inc., has engaged in the business of offering a variety of sporting goods, including fishing equipment, under the SHIMANO mark since at least as early as 1966. Complainant holds a valid trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SHIMANO mark (Reg. No. 989,509 issued July 30, 1974). Complainant also operates a website in connection with its business, located at the <shimano.com> domain name.
Respondent, Lee Garbis, registered the <newshimano.com> domain name on October 9, 2005. Respondent’s disputed domain name resolves to a commercial website that sells Complainant’s fishing equipment.
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 asserts and submits evidence of federal trademark applications for the SHIMANO mark with the USPTO. Prior panels have held that a complainant’s registration of a mark with the USPTO establishes rights in the mark for the complainant pursuant to Policy ¶ 4(a)(i). For instance, in VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005), the panel held, “Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (‘USPTO’).” Similarly, in AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), the panel found the complainant’s registration of the AOL mark with the USPTO established its rights in the mark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel in the present case finds that Complainant’s registration of the SHIMANO mark with the USPTO demonstrates Complainant’s rights in the mark in satisfaction of Policy ¶ 4(a)(i).
The Panel finds that Respondent’s <newshimano.com> domain name is confusingly similar to Complainant’s SHIMANO mark for purposes of Policy ¶ 4(a)(i), as the disputed domain name consists of Complainant’s registered mark in its entirety, with the addition of the term “new,” and the generic top-level domain (“gTLD”) “.com.” In Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006), the panel found that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name were insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i). Moreover, the panel in AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006), found that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark did not distinguish the domain names from the mark. Consequently, the Panel in the instant case concludes that Respondent’s <newshimano.com> domain name is confusingly similar to Complainant’s SHIMANO mark pursuant to 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 then shifts, and Respondent must establish that it possesses rights or legitimate interests in the disputed domain name in accord with Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in connection with the <newshimano.com> domain name under Policy ¶ 4(c).
Respondent’s disputed domain name resolves to a website offering Complainant’s products for sale. Respondent’s website also prominently displays Complainant’s SHIMANO mark, as well as the logo of Complainant’s business. Prior panels addressing similar circumstances have held that a respondent’s use of a domain name that is confusingly similar to a complainant’s mark to sell complainant’s products does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate or fair noncommercial use under Policy ¶ 4(c)(iii). In Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000), the panel found that the respondent’s use of the disputed domain names to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, was not bona fide use. Similarly, the panel in Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001), held that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, was not bona fide use. Therefore, the Panel finds that Respondent’s use of the <newshimano.com> domain name to operate a website selling Complainant’s products 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).
Moreover, the evidence on record does not suggest that Respondent is commonly known by the <newshimano.com> domain name under Policy ¶ 4(c)(ii). According to the WHOIS information for the <newshimano.com> domain name, Respondent is known as “Les Garbis.” Furthermore, Complainant asserts that Respondent is not connected to Complainant’s business in any way, and is not authorized to use Complainant’s SHIMANO mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent registered and used the <newshimano.com> domain name to divert Internet users to Respondent’s website, which offers for sale Complainant’s products without Complainant’s authorization. Therefore, the Panel concludes that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Additionally, in light of Respondent’s use of the disputed domain name to operate a website
offering Complainant’s products for sale without Complainant’s authorization,
the Panel finds that Respondent registered and used the <newshimano.com>
domain name primarily for the purpose
of disrupting the business of Complainant.
Thus, the Panel concludes that Respondent registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co.
v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002)
(“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s
products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Caterpillar Inc. v. Vine,
FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the
disputed domain names in order to gain customers and to disrupt Complainant's
business of authorizing dealers to sell its CATERPILLAR equipment.”).
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 <newshimano.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 6, 2006
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