Spike's Holding, LLC v. finishlinefactory-online-sale.com
Claim Number: FA1708001747085
Complainant is Spike's Holding, LLC (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is finishlinefactory-online-sale.com (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finishlinefactory-online-sale.com>, registered with Shinjiru Technology Sdn Bhd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 31, 2017; the Forum received payment on August 31, 2017.
After numerous requests, the Registrar, Shinjiru Technology Sdn Bhd, has not confirmed to the Forum that the <finishlinefactory-online-sale.com> domain name is registered with Shinjiru Technology Sdn Bhd or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The ’s standing instructions are to proceed with this dispute.
On September 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 2017 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@finishlinefactory-online-sale.com. Also on September 6, 2017, 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 September 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant is a global retailer of sports-related goods and services, including apparel, footwear, and sports accessories. Complainant uses the FINISH LINE mark in conjunction with its business practices. Complainant registered the FINISH LINE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,960,882, registered Mar. 5, 1996). Complainant also registered the FINISH LINE mark with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 4354391, registered Nov. 9, 2004). Respondent’s <finishlinefactory-online-sale.com> is confusingly similar to Complainant’s FINISH LINE mark because it incorporates the mark in its entirety, adding the generic terms “factory,” “online,” and “sale,” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <finishlinefactory-online-sale.com>. Respondent is not commonly known by the disputed domain name. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <finishlinefactory-online-sale.com> resolves to a website attempting to pass itself off as Complainant to obtain personal and financial information from customers seeking to purchase goods from Complainant.
Respondent registered and is using <finishlinefactory-online-sale.com> in bad faith. The disputed domain name mirrors Complainant’s website in an effort to impersonate Complainant. Respondent’s website attracts internet users for commercial gain, while attempting to fraudulently obtain customers’ personal and financial information under Complainant’s FINISH LINE mark. Respondent registered <finishlinefactory-online-sale.com> with actual knowledge of Complainant and its rights to the FINISH LINE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Spike's Holding, LLC, of Indianapolis, IN, USA. Claimant is the owner of domestic and international registrations for the mark FINISH LINE, and related marks and designs, which it has continuously used since at least as early as 1982, in connection with its business of providing sporting goods, accessories, and apparel, as well as services related thereto.
Respondent is finishlinefactory-online-sale.com, of Seoul, South Korea. Respondent’s address is listed as abuse@ilovewww.com.
The Panel notes that Respondent registered <finishlinefactory-online-sale.com> on August 5, 2017.
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(f), 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 (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 is a global retailer of sports-related goods and services, including apparel, footwear, and sports accessories. Complainant uses the FINISH LINE mark in conjunction with its business practices. Complainant claims it registered the FINISH LINE mark with USPTO (e.g., Reg. No. 1,960,882, registered Mar. 5, 1996). Complainant also claims it registered the FINISH LINE mark with SAIC (e.g., Reg. No. 4354391, registered Nov. 9, 2004). Prior panels have found that registrations with government trademark entities are sufficient to show rights in a mark. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). The Panel here finds that Complainant’s registrations with the USPTO and SAIC are sufficient to show rights in the FINISH LINE mark.
Complainant asserts that Respondent’s <finishlinefactory-online-sale.com> is confusingly similar to Complainant’s FINISH LINE mark because it incorporates the mark in its entirety, adding the generic terms “factory,” “online,” and “sale,” and the “.com” gTLD. The addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901. The Panel here finds that the alterations made to Complainant’s FINISH LINE mark are insufficient to differentiate it from Respondent’s <finishlinefactory-online-sale.com>.
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant asserts that Respondent does not have rights or legitimate interests in <finishlinefactory-online-sale.com>. To support its assertion, Complainant indicates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “finishlinefactory-online-sale.com finishlinefactory-online-sale.com” of “finishlinefactory-online-sale.com.” Where “there is nothing in the record that corroborates the WHOIS data’s suggestion that [r]espondent may be commonly known by the [disputed] domain name[,]” panels have found that the “[r]espondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).” The Toronto-Dominion Bank v. RD BANK /-, FA1404001554468 (Forum May 13, 2014). Based on Respondent’s WHOIS information and absence of a Response to Complainant’s assertions, the Panel here finds that Respondent is not commonly known by <finishlinefactory-online-sale.com>.
Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. To support its contention, Complainant provides evidence that Respondent’s <finishlinefactory-online-sale.com> resolves to a website attempting to pass itself off as Complainant to obtain personal and financial information from customers seeking to purchase goods from Complainant. The respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008). Moreover, “Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.” DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017). The Panel here finds that Respondent does not have legitimate rights or interests in <finishlinefactory-online-sale.com> pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant maintains that Respondent registered and is using <finishlinefactory-online-sale.com> in bad faith. Complainant asserts that the disputed domain name mirrors Complainant’s website in an effort to impersonate Complainant. The disputed domain name is registered and used in bad faith where the respondent hosts a website that “duplicate[s] Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business.” Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel here finds that Respondent’s attempts to pass itself off as Complainant evinces bad faith registration under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent’s website attracts internet users for commercial gain, while attempting to fraudulently obtain customers’ personal and financial information under Complainant’s FINISH LINE mark. “Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.” Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003). Past panels have determined that the respondent demonstrates bad faith registration and use where it is attempting to acquire the personal and financial information of internet users through a confusingly similar domain name. See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006). The Panel here finds that Respondent registered and is using <finishlinefactory-online-sale.com> pursuant to Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <finishlinefactory-online-sale.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 12, 2017
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