Zuffa, LLC v. Alexandra Smart / Techer
Claim Number: FA1509001639582
Complainant is Zuffa, LLC (“Complainant”), represented by Joanna M. Myers of Dickinson Wright PLLC, Nevada, USA. Respondent is Alexandra Smart / Techer (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ufcarena.com>, registered with Webfusion Ltd..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2015; the Forum received payment on September 25, 2015.
On September 28, 2015, Webfusion Ltd. confirmed by e-mail to the Forum that the <ufcarena.com> domain name is/are registered with Webfusion Ltd. and that Respondent is the current registrant of the name. Webfusion Ltd. has verified that Respondent is bound by the Webfusion Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ufcarena.com. Also on September 29, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
1. Complainant has rights in the UFC mark through multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,645,312, registered November 5, 2002). Respondent’s <ufcarena.com> domain name, registered on February 4, 2015, is confusingly similar to Complainant’s UFC mark as the domain only adds the generic term “arena” and the generic top-level domain “.com.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name as shown by WHOIS information where Respondent is listed as “Alexandra Smart” of the organization “Techer.”
3. Additionally, Respondent’s use of the domain name to redirect users to Respondent’s website using Complainant’s mark, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
4. Respondent has registered and is using the disputed domain name in bad faith. Respondent registered the domain name for the purpose of disrupting the business of Complainant. Respondent also attracts Complainant’s customers and redirects them to Respondent’s own website, presumably for commercial gain.
5. Finally, based on the use of Respondent’s domain name and the fame of Complainant’s UFC mark, Respondent had actual or constructive knowledge of Complainant’s rights in the mark that the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the UFC mark. Respondent’s domain name is confusingly similar to Complainant’s UFC mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <ufcarena.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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."
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.
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.”).
Complainant asserts its rights in the UFC mark through multiple registrations with the USPTO (e.g., Reg. No. 2,645,312, registered November 5, 2002). A complainant has rights in a mark where the mark is registered with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel finds that Complainant has demonstrated its rights in the UFC mark through its USPTO registrations of the mark.
In connection with its asserted rights in the UFC mark Complainant alleges that Respondent’s <ufcarena.com> domain name is confusingly similar to the mark. The domain name adds the generic term “arena” and the generic top-level domain “.com.” The addition of generic terms and gTLDs fail in distinguishing a domain name from a mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). The Panel finds the addition of term “arena” and the generic top-level domain “.com” do not sufficiently distinguish the domain from the UFC mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the domain name at issue in this proceeding. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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 holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <ufcarena.com> domain name. Complainant contends that Respondent has not been commonly known by the <ufcarena.com> domain name as shown by WHOIS information where Respondent is listed as “Alexandra Smart” of the organization “Techer.” In light of Respondent’s failure to submit evidence for the Panel’s consideration, the Panel finds no evidence to support a finding Respondent has been commonly known by the <ufcarena.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant contends that Respondent’s use of the <ufcarena.com> domain to redirect users to Respondent’s website using Complainant’s marks, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant urges that Respondent has registered and is using the <ufcarena.com> domain name in bad faith. First, Complainant contends Respondent registered the domain name for the purpose of disrupting the business of complainant. The Panel agrees. See, e.g., DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds Respondent’s use as demonstrative of bad faith within the meaning of paragraph 4(b)(iii) of the Policy.
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the UFC mark prior to registration of the domain name because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. The Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the <ufcarena.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ufcarena.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 12, 2015
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