Bryan Kilpatrick v. Jeff McDonald
Claim Number: FA0607000765307
PARTIES
Complainant is Bryan Kilpatrick (“Complainant”), 3340 Applecross Lane, Cumming, GA 30041. Respondent is Jeff McDonald (“Respondent”), 67 Canterbury Lane, Southington, CT 06489.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <basketball-goals.com>,
registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that he 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.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 29, 2006; the National Arbitration Forum received a hard
copy of the Complaint on August 3, 2006.
On August 1, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <basketball-goals.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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 August 10, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 30, 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@basketball-goals.com by e-mail.
A timely Response was received and determined to be complete on August
11, 2006.
On August 21, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Timothy D. O’Leary as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
COMPLAINANT CONTENTIONS
Contention 1.
As to the Identical and
Confusingly Similar Contention, Complainant states:
Respondent’s <basketball-goals.com> domain name is essentially identical to
Complainant’s BASKETBALLGOALS.COM service marks and trade name, and is likely
to cause confusion, mistake or deception among the trade and the public;
Respondent’s <basketball-goals.com> domain name is essentially identical to
Complainant’s <basketballgoals.com> domain name, and is likely to cause
confusion, mistake or deception among the trade and the public;
Respondent’s <basketball-goals.com> domain
name shares an identical overall commercial impression with Complainant’s
BASKETBALLGOALS.COM service marks and trade name, as well as Complainant’s
<basketballgoals.com> domain name, and that it is likely to cause
confusion, mistake or deception among the trade and public;
Respondent’s adoption and use of the <basketball-goals.com> domain name dilutes the
distinctive quality of Complainant’s service mark and trade name.
Response of Respondent to
Contention Number 1:
The Complainant’s mark does not distinguish the owner’s good and
services from others. Respondent
further contends the Complainant does not have “exclusive rights” to the
descriptive generic terms “basketball goals.”
Respondent submits that the generic words basketball goals are being
widely used. As “basketball goals” are
both generic terms, the Complainant has no protectable rights in the mark. And while he may have applied for a
trademark, to Respondent’s knowledge, to this date, has not been granted
registration of same.
Contention
2.
As
to the Rights or Legitimate Interests Contention, Complainant States:
Respondent has no legitimate rights in the <basketball-goals.com> domain
name other than to trade upon the established good will of
BASKETBALLGOALS.COM.
Response of Respondent to
Contention Number 2:
Complainant has submitted no evidence to
establish either fame or strong secondary meaning in its mark such that
consumers are likely to associate the <basketball-goals.com> domain name only with
Complainant. The scope of product
selection offered on the <basketball-goals.com> web site far exceeds the offerings on the
<basketballgoals.com> web site and leaves no confusion or mistaken
impression amongst any reasonable person viewing both web sites. Respondent purchased the domain name for the
purpose of developing a premiere interest shopping destination geared toward
sales and consultation services for institutional and residential sports
facilities, Respondent has accomplished this goal, Complainant offers no proof
that Respondent has no legitimate interest in respect of the <basketball-goals.com> domain
name.
Contention 3.
As
to the Registration and Use in Bad Faith Contention, Complainant states:
Respondent’s adoption and use of the <basketball-goals.com> domain name is in bad faith and is an intentional infringement of Complainant’s prior rights. By using the <basketball-goals.com> domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
Response of Respondent to
Contention Number 3:
Respondent is a well known only sporting goods reseller, proud member
of the Better Business Bureau with a 4 year history and zero registered
complaints, a Certified US Federal Government Trading Partner and member of the
US Central Contractors Registry, and has accounts with numerous schools,
municipalities, US military, Universities and Churches throughout the United
States and the world. Respondent
registered the domain name years before the Complainant applied for a trademark
to assert “his right.” Respondent did
not register the domain name at issue in bad faith. Complainant offers no evidence that Respondent has registered the
domain name in bad faith.
FINDINGS
IDENTICAL
OR CONFUSINGLY SIMILAR Policy ¶ 4(a)(i)
The Panel finds the issues on this element in
favor of Respondent.
The Panel finds
that Complainant has not sufficiently proven rights in the BASKETBALLGOALS.COM mark. Complainant has not asserted any evidence
regarding its use of the BASKETBALLGOALS.COM mark other than the trademark
application form, which has not yet been approved. Moreover, the trademark application specifically states “no claim
is made to the exclusive right to use “basketball goals” apart from the mark
shown.” The Panel thus finds that
Complainant does not have exclusive rights to the mark. The Panel also
finds that Respondent’s rights in the disputed domain name pre-date any rights
Complainant has in the mark as Respondent registered the disputed domain name
February 25, 2002, and Complainant did not apply for a trademark registration
until August 1, 2005. See Amsec Enters., L.C. v. McCall,
D2001-0083 (WIPO Apr. 3, 2001) (“Complainant’s pending applications do not
establish any enforceable rights until registration issues.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that
the complainant failed to establish common law rights in its mark because mere
assertions of such rights are insufficient without accompanying evidence to
demonstrate that the public identifies the complainant’s mark exclusively or
primarily with the complainant’s products).
RIGHTS AND LEGITIMATE INTERESTS:
Policy ¶ 4(a)(ii).
The Panel finds the issues on this element in favor of
Respondent. Italic
The Panel finds that Complainant has failed to allege facts
sufficient to create a prima facie case for lack of rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13,
2001) (finding that even when the respondent does file a response, the
complainant must allege facts, which if true, would establish that the
respondent does not have any rights or legitimate interests in the disputed
domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA
133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any
facts by the complainant that establish the respondent lacks rights or
legitimate interests in the disputed domain name, the panel may decline to
transfer the disputed domain name).
The Panel further finds that Respondent is using the <basketball-goals.com> domain name
for a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i), in accordance with Respondent’s assertion. See AmeriCares Found., Inc. v. Ewing, D2003-0347 (WIPO
June 26, 2003) (finding that the <americare.org> domain name was used in
a bona fide manner since respondent registered the domain name on behalf
of AmeriCare MedServices, which had been using the “AmeriCare” name in business
for seven years prior to the dispute); see also Russell &
Miller, Inc. v. Dismar Corp., FA 353039 (Nat. Arb. Forum
Dec. 20, 2004) (finding that the respondent
used the <salesigns.com> domain name for a bona fide offering of
goods or services, which was established by the respondent’s “longstanding
involvement in the ‘sale sign’ market and its use of a descriptive domain name
to further its competition in that market”).
REGISTRATION AND
USE IN BAD FAITH: Policy ¶
4(a)(iii).
The Panel finds the issues on this element in favor of
Respondent.
The Panel finds that Complainant failed to meet
its burden of proof of bad faith registration and use under Policy ¶
4(a)(iii). See Starwood Hotels &
Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum
Mar. 9, 2005) (finding that the complainant failed to establish that respondent
registered and used the disputed domain name in bad faith because mere
assertions of bad faith are insufficient for a complainant to establish Policy
¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA
133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad
faith without supporting facts or specific examples do not supply a sufficient
basis upon which the panel may conclude that the respondent acted in bad
faith).
The Panel finds that Respondent is using the <basketball-goals.com>
domain name for a bona fide offering of goods pursuant to Policy ¶
4(a)(ii). Thus, the Panel concludes
that Respondent did not register the names in bad faith pursuant to Policy ¶
4(a)(iii). See Reid v.
Chao, FA 154587 (Nat. Arb. Forum May 29, 2003) (finding that the respondent
could not have registered the disputed domain name in bad faith where its
registration came months before the complainant filed its trademark application
and no evidence of common-law rights in the mark were submitted to the panel); see
also Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept.
11, 2000) (finding that because “Respondent neither offered the Domain Name for
sale, nor wanted it to disrupt Complainant’s business, [nor] prevent
Complainant from reflecting the mark in its domain,” it did not register or use
the domain name <metagen.com> in bad faith).
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.
The Panel finds
the issues in favor of Respondent.
The Panel finds
the issues in favor of Respondent.
The Panel finds
the issues in favor of Respondent.
DECISION
Having failed to establish any the three elements required under the
ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that Complainant’s
request to transfer the domain name <basketball-goals.com> is DENIED.
Timothy D. O’Leary
Panelist
Dated: September 4, 2006
National
Arbitration Forum
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page