national arbitration forum

 

DECISION

 

Peter Jerie v. Hotlive c/o Zeynel Brown a/k/a Aaaaaaaaaaaaa c/o Yok Yok

Claim Number: FA0702000921287

 

PARTIES

Complainant is Peter Jerie (“Complainant”), represented by Sean F. Heneghan, 31 Reading Hill Avenue, Melrose, MA 02176, USA.  Respondent is Hotlive c/o Zeynel Brown a/k/a Aaaaaaaaaaaaa c/o Yok Yok (“Respondent”), 12 Stret, ncq place, Manhattan, Manhattan 00000, GB.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <hotlivescore.com> and <hotlivescore.net>, registered with Namesdirect.

 

PANEL

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 23, 2007.

 

On February 21, 2007, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <hotlivescore.com> and <hotlivescore.net> domain names are registered with Namesdirect and that Respondent is the current registrant of the names.  Namesdirect has verified that Respondent is bound by the Namesdirect 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 February 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 2007 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@hotlivescore.com and postmaster@hotlivescore.net by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 26, 2007 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon  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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <hotlivescore.com> and <hotlivescore.net> domain names are confusingly similar to Complainant’s LIVESCORE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <hotlivescore.com> and <hotlivescore.net> domain names.

 

3.      Respondent registered and used the <hotlivescore.com> and <hotlivescore.net> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Peter Jerie, has used the LIVESCORE mark in connection with its business of providing real-time scores for sporting events online since 1998.  Complainant holds a United States Patent and Trademark Office (“USPTO”) registration for the LIVESCORE mark (Reg. No. 2,514,933 issued December 4, 2001).  Complainant has also registered the <livescore.com> domain name for use in connection with its business. 

 

Respondent registered the <hotlivescore.com> domain name on September 13, 2006 and the <hotlivescore.net> domain name on October 8, 2006.  Respondent is using the disputed domain names to redirect Internet users to its website at the <hotlivescore.com> domain name which features services identical to, and in direct competition with, Complainant.  Additionally, Respondent’s website includes advertisements and links for gaming entertainment services.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has used its LIVESCORE mark since 1998 and its USPTO registration dates back to 2001, well before Respondent’s registration of the disputed domain names.  The Panel finds that Complainant has established rights in the LIVESCORE mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also 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.”).

 

Respondent’s <hotlivescore.com> and <hotlivescore.net> domain names are confusingly similar to Complainant’s LIVESCORE mark.  The disputed domain names both include Complainant’s LIVESCORE mark in its entirety without alteration.  In Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), the panel found that “the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”  The only difference between the disputed domain names and Complainant’s mark is the addition of the generic term “hot.”  Previous panels have declined to find that the addition of a generic term to a complainant’s mark distinguishes a disputed domain name from a mark.  For example, the panel in Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), found confusing similarity where the domain name in dispute contained the identical mark of the complainant combined with a generic word or term.  Finally, the disputed domain names add the generic top-level domains “.com” and “.net” to Complainant’s mark.  It is long established that the addition of top-level domains is without significance under the Policy as top-level domains are required for all domain names.  As the panel in Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), stated, “the addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”  Thus, the Panel finds that the <hotlivescore.com> and <hotlivescore.net> domain names are confusingly similar to Complainant’s LIVESCORE mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain names.  Previous panels, including those in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), have found that complainant’s assertions constitute a prima facie case pursuant to the Policy and shift the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names as contemplated by Policy ¶ 4(c).  Respondent failed to take advantage of the opportunity to submit a Response in this proceeding, thus failing to provide the Panel with evidence or arguments in support of its rights or legitimate interests.  In Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), the panel stated that “based on respondent's failure to respond, it is presumed that respondent lacks all rights and legitimate interests in the disputed domain name.”  While this Panel concurs with the reasoning of the Am. Express Co. panel, it will nonetheless evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Respondent is using the disputed domain names to redirect Internet users to Respondent’s website connected to the <hotlivescore.com> domain name.  Respondent’s website includes real-time scores and links to gaming entertainment services, services that are in direct competition with Complainant’s services offered at its <livescore.com> domain name.  Presumably, Respondent is profiting both from the collection of fees for its real-time scores and from pay-per-click fees generated by the third-party links on its website.  In similar circumstances, panels have found that such competing use of a domain name including a complainant’s mark is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  For example, the panel in Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), found that “respondent’s appropriation of [complainant’s] SAFLOK mark to market products that compete with complainant’s goods does not constitute a bona fide offering of goods and services.”  Similarly, in Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003), the panel found that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks.  Thus, the Panel finds that Respondent has not established rights or legitimate interests through a use contemplated by Policy ¶¶ 4(c)(i) or (iii).

 

Additionally, there is no available evidence that Respondent is commonly known by the <hotlivescore.com> and <hotlivescore.net> domain names either as an individual or as a business.  In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel recognized the WHOIS information could be used as evidence that a respondent is not commonly known by the disputed domain name.  In this case, Respondent’s WHOIS information identifies it as “Hotlive c/o Zeynel Brown a/k/a Aaaaaaaaaaaaa c/o Yok Yok,” which has no apparent relationship to the disputed domain names.  Further, Complainant asserts that it is in no way affiliated with Respondent and has not given Respondent permission to reflect its mark in a domain name.  In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel declined to find rights or legitimate interests 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.

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain names to redirect Internet users to its website which offers services in direct competition with Complainant.  Internet users seeking Complainant’s genuine website at the <livescore.com> domain name may find themselves instead redirected to Respondent’s website and may end up doing business with Respondent instead of with Complainant.  Under similar circumstances in Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000), the panel found that the complainant’s business was disrupted when the respondent diverted business from the complainant to a competitor’s website, which was in violation of Policy ¶ 4(b)(iii).  In Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000), the panel found that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com>, which is identical to the complainant’s services under the OPENMAIL mark.  Thus, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by disrupting Complainant’s business.

 

Respondent’s <hotlivescore.com> and <hotlivescore.net> domain names are confusingly similar to Complainant’s LIVESCORE mark.  Internet users seeking Complainant’s genuine services may be redirected to Respondent’s website and mistakenly believe that it is sponsored by or affiliated with Complainant.  Because Respondent’s disputed domain names contain Complainant’s mark in its entirety and because the website is used for services identical to those of Complainant, it is very likely that Internet users will believe that Respondent has some relationship with Complainant.  Respondent is presumably profiting from this confusion by selling services that compete with Complainant and by collecting pay-per-click revenues from links to third-party websites.  In Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003), the panel stated that, “as respondent is using the domain name at issue in direct competition with complainant, and giving the impression of being affiliated with or sponsored by complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”  Similarly, the panel in Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), found that “respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”  Thus, the Panel finds that Respondent has exhibited bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <hotlivescore.com> and <hotlivescore.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

Louis E. Condon, Panelist

Dated:  April 6, 2007

 

 

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