Time Inc. v. Tony Pearson
Claim Number: FA0610000811480
Complainant is Time Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Tony Pearson (“Respondent”), 405 Southwest Drive, Suite A 176, Jonesboro, AR 72401.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mysportsillustrated.com>, registered with Go Daddy Software, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2006.
On October 3, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <mysportsillustrated.com> domain name is registered with Go Daddy Software, Inc. and that 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 October 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 24, 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@mysportsillustrated.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <mysportsillustrated.com> domain name is confusingly similar to Complainant’s SPORTS ILLUSTRATED mark.
2. Respondent does not have any rights or legitimate interests in the <mysportsillustrated.com> domain name.
3. Respondent registered and used the <mysportsillustrated.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Time Inc., is a leading media and entertainment
company. Complainant owns all rights, title
and interest in the family of marks including the SPORTS ILLUSTRATED mark. Complainant holds numerous trademark
registrations for the SPORTS ILLUSTRATED mark with the United States Patent and
Trademark Office (“USPTO”) (e.g., Reg. No. 0,754,203 issued August 6,
1963). Complainant utilizes the SPORTS
ILLUSTRATED mark in connection with its offering of publications,
entertainment, and information services.
In connection with its business, Complainant also holds the
<sportsillustrated.com> domain name registration, which resolves to
Complainant’s website that provides information and services on the
Internet.
Respondent, Tony Pearson, registered the <mysportsillustrated.com> domain name on April 11, 2006. Respondent’s disputed domain name previously resolved to a website offering sports information and services in competition with Complainant’s business. Respondent’s <mysportsillustrated.com> domain name currently resolves to a website offering the disputed domain name registration for sale for $1,000,000.00.
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 avers and submits evidence of several federal trademark registrations with the USPTO for the SPORTS ILLUSTRATED mark. Consistent with the holdings of previous panels, the Panel in the instant case finds that Complainant’s registration of the SPORTS ILLUSTRATED mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
Furthermore, the Panel finds that Respondent’s <mysportsillustrated.com> domain name is confusingly similar to Complainant’s registered SPORTS ILLUSTRATED mark. In particular, the Panel finds that the disputed domain name incorporates Complainant’s registered SPORTS ILLUSTRATED mark in its entirety, with the addition of the generic or descriptive term, “my,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of the term “my” to Complainant’s mark in the disputed domain name does not sufficiently distinguish Respondent’s disputed domain name from Complainant’s SPORTS ILLUSTRATED mark and avoid the creation of confusing similarity pursuant to Policy ¶ 4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark”); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”). Moreover, the Panel finds that the addition of a gTLD to Complainant’s registered mark also fails to negate the confusing similarity between the mark and the disputed domain name pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .”); see also 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). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s 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 initially bears the burden of establishing that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to establish that it has rights or legitimate interests with respect to the disputed domain name under 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 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.”). The Panel finds that Complainant has sufficiently established a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c).
Respondent’s disputed domain name previously resolved to a website offering information and services related to sporting events, in competition with Complainant’s business. Consequently, the Panel finds that Respondent’s use of the <mysportsillustrated.com> domain name does not constitute either 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). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(a)(i)); see also 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).”).
Additionally, Respondent’s <mysportsillustrated.com> domain name currently resolves to a website offering the disputed domain name registration for sale for $1,000,000.00. Thus, the Panel finds that Respondent’s offer to sell the disputed domain name registration does not evince either 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). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Furthermore, the Panel finds that the evidence on record does not demonstrate that Respondent is commonly known by the <mysportsillustrated.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant contends that Respondent is not licensed or otherwise authorized by Complainant to use Complainant’s SPORTS ILLUSTRATED mark. Additionally, Respondent’s WHOIS information fails to demonstrate that Respondent is known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <mysportsillustrated.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 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent is not commonly known by the <shoredurometer.com> or <shoredurometers.com> domain names where the WHOIS information indicates the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggests that the respondent is commonly known by the domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s <mysportsillustrated.com> domain name previously resolved to a website offering sports information and services in competition with Complainant’s business. As a result, the Panel finds that Respondent utilized the disputed domain name in order to trade off of the goodwill associated with Complainant’s registered SPORTS ILLUSTRATED mark, and for Respondent’s commercial benefit. Therefore, the Panel concludes that Respondent registered and used the <mysportsillustrated.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Moreover, in light of Respondent’s offering of the <mysportsillustrated.com> domain name registration for sale, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
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 <mysportsillustrated.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 13, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum