Annika Sorenstam v. Annika Sorenstam Inc. c/o Domain Administrator
Claim Number: FA0608000783224
Complainant is Annika Sorenstam (“Complainant”), represented by Julie Lewis Sroka, of IMG Worldwide, Inc., IMG Center, Suite 100, 1360 East 9th Street, Cleveland 44114-1782. Respondent is Annika Sorenstam Inc. c/o Domain Administrator (“Respondent”), 1234 Main Street, New York, NY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <annikasorenstam.com>, registered with Nameview, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2006.
On August 30, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <annikasorenstam.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 September 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 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@annikasorenstam.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge 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 <annikasorenstam.com> domain name is identical to Complainant’s ANNIKA SORENSTAM mark.
2. Respondent does not have any rights or legitimate interests in the <annikasorenstam.com> domain name.
3. Respondent registered and used the <annikasorenstam.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Annika Sorenstam, is a popular and successful
professional golfer on the LPGA tour.
Complainant has been known to the public since at least 1994, when she
was named Rookie of the Year by the LPGA.
Complainant holds numerous titles and honors in the sport of golf. In addition, Complainant has used her image
and name in connection with various promotional advertising and sponsorships. Complainant has used her given name and the
ANNIKA SORENSTAM mark both privately and in her business transactions.
Respondent registered the <annikasorenstam.com> domain name on March 24, 2003. Respondent’s disputed domain name resolves to a website that displays hyperlinks to various websites that are both related and unrelated to Complainant.
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 is not required to own a trademark registration to establish rights in the ANNIKA SORENSTAM mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
The Panel finds that Complainant has established common law
rights in the ANNIKA SORENSTAM mark through continuous and extensive use of the
mark throughout her life. Complainant
has been known by the ANNIKA SORENSTAM mark in her capacity as an amateur and
professional golfer since at least 1994.
Such use sufficiently establishes common law rights in the mark under
Policy ¶ 4(a)(i). See Garnett v.
Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (holding that
the complainant had accrued common law rights in the KEVIN GARNETT mark); see also CMG Worldwide, Inc.
v. Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12, 2001) (finding that the
complainant had established enforceable rights in the common-law VINCE LOMBARDI
name and mark).
Respondent’s <annikasorenstam.com> domain name is identical to Complainant’s name and mark pursuant to Policy ¶ 4(a)(i) as it contains Complainant’s entire mark with the addition of the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is irrelevant when examining whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <annikasorenstam.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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”); 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).”).
Although Respondent’s WHOIS information asserts that Respondent is known by the ANNIKA SORENSTAM mark, there is no other evidence in the record to prove the WHOIS listing. Additionally, Complainant asserts that Respondent is not authorized to use Complainant’s ANNIKA SORENSTAM mark, and that Respondent is not associated with Complainant in any way. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); 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).
Moreover, based on evidence in the record, the <annikasorenstam.com> domain name resolves to a website that displays hyperlinks to related and unrelated third-party websites, presumably for the commercial benefit of Respondent. Such use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair interest under 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).”); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
The evidence in the record suggests that Respondent is using
the <annikasorenstam.com> domain name to divert Internet users to
a website that displays hyperlinks to various third-party websites. The Panel infers that Respondent receives
click-through fees for diverting consumers to these websites. As such, Respondent is taking advantage of
the likelihood of confusion between Respondent’s disputed domain name and
Complainant’s mark. The Panel finds
that such use constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see
also State Farm Mut. Auto.
Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding
that the respondent registered the domain name <statefarmnews.com> in bad
faith because the respondent intended to use the complainant’s marks to attract
the public to the web site without permission from the complainant).
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 <annikasorenstam.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 12, 2006
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