World Triathlon Corporation v. ironman
Claim Number: FA0511000600972
PARTIES
Complainant is World Triathlon
Corporation (“Complainant”), represented by Joseph J. Weissman of Johnson, Pope, Bokor, Ruppel & Burns,
LLP, P.O. Box 1100, Tampa,
FL, 33601-1100. Respondent is ironman (“Respondent”), represented by Kevin R. Erdman of Baker & Daniels LLP,
300 North Meridian Street, Suite 2700, Indianapolis, IN, 46204-1782.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ironman.com>,
registered with Addrcreat.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically November 21, 2005; the National Arbitration Forum received a
hard copy of the Complaint November 28, 2005.
On November 28, 2005, Addrcreat confirmed by e-mail to the National
Arbitration Forum that the <ironman.com>
domain name is registered with Addrcreat and that the Respondent is the current
registrant of the name. Addrcreat
verified that Respondent is bound by the Addrcreat registration agreement and
thereby has agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On December 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 21, 2005, 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@ironman.com by e-mail.
Respondent filed a timely Response, determined to be complete, December
21, 2005.
Complainant filed a timely Additional Submission, received December 27,
2005, and determined complete pursuant to The Forum’s Supplemental Rule #7.
On December 28, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations:
1.
Complainant has
rights in the mark contained within the disputed domain name by virtue of the
IRONMANLIVE registration with the United States Patent and Trademark Office.
2.
Complainant
sponsors the international IRONMAN TRIATHALON World Championship that has been
held each year in Hawaii since 1978 and offers other goods and services related
to IRONMAN competitions.
3.
The IRONMAN
TRIATHALON has been and is publicized worldwide by news and entertainment
publications and the media and the event is identified to Complainant and its
mark.
4.
Since 1984,
Complainant has licensed its IRONMAN mark in connections with the sponsorship
of events and the sale of varied goods and services.
5.
As a result the
IRONMAN mark has acquired considerable goodwill.
6.
Respondent has
no rights to or legitimate interests in the domain name containing
Complainant’s protected mark.
7.
Respondent has
made no bona fide use of the domain name containing Complainant’s IRONMAN mark
but instead used it to transfer those seeking Complainant’s goods and services
to a pornographic website.
8.
Respondent has
yet “to function as a company, it has no income, no assets and has not used the
IRONMAN.COM mark outside of acquiring the domain,” which Respondent did on the
first day it became available along with “fifty other domain names, on August 10,
2000.”
9.
Complainant
alleged bad faith. Complainant noted: “Respondent admits to having registered
over 27,000 domain names, … currently owns or controls over 20,000 domain names
[and] Ninety-eight percent of the thousands of domain names controlled by [Respondent]
are blank except for a possible default page.”
B. Respondent made the following points in
Response:
1.
Iron Man
Company (IMC) is a partnership of Anthony Peppler and Ross Mueller, created
August of 2000. Mr. Peppler purchased
ironman.com August 10, 2000. IMC
applied for a trademark March 11, 2002.
2.
IMC posted a
“Coming Soon” on ironman.com.
3.
IMC and Peppler
spent two years and $40,000., developing the web site, which is 95 percent
complete.
4.
No likelihood
of confusion exists because other IRONMAN entities function over the Internet
and the domain name is similar to nine other registered marks that are
different from Complainant’s area of commerce.
5.
IMC seeks only
to provide customized on-line web pages and does not offer goods.
6.
Complainant
waited too long to protect its interests.
C. Additional Submissions
Complainant alleged in its Additional Submission that Respondent did
not address the required elements, admitted to the identical nature of the
domain name, did not show legitimate rights in the domain name and did not
offer proof of its lack of back faith.
Further, Complainant pointed out that the equitable doctrine of laches
does not apply in the UDRP context.
FINDINGS
1.
Complainant
established by extrinsic proof that it has rights to and legitimate interests
in the IRONMAN mark and that it has had such rights for more than a quarter of
a century.
2.
Complainant
established that the disputed domain name is identical to or confusingly
similar to a mark in which Complainant has rights.
3.
Complainant
established that considerable good will attaches to its mark and that the
international community identifies Complainant with the IRONMAN competition and
related areas of commerce.
4.
Complainant
alleged that although it has licensed its mark for more than twenty years,
Complainant did not authorize Respondent to use its mark and Respondent
produced no evidence of such license or right to use Complainant’s mark for any
purpose.
5.
Respondent did
not establish that his purchase of the domain name brought with it a license to
opportunistically appropriate and exploit Complainant’s mark and the good will
associated with Complainant’s long established offer of goods and services.
6.
Respondent has
not established that it developed the web site or spent the claimed $40,000. in
preparation to use the web site in the manner that Respondent suggests that it
has and will do. Respondent did not deny that it offered pornography at the
site.
7.
Complainant
alleged bad faith; Respondent denied bad faith. Actions and manifestations control over attestations.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 Complainant to 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 the Complainant has rights;
(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 established with extrinsic proof in this proceeding that it
has established legal rights in IRONMANLIVE.COM and related marks by
registering them with the United States Patent and Trademark Office (“USPTO”)
(See for example Reg. No. 2,343,316 issued April 18, 2000). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also
Innomed Tech., 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.”).
Complainant alleged that the <ironman.com> domain name that Respondent purchased is confusingly similar to Complainant’s IRONMAN and IRONMANLIVE.COM mark because it is identical to the IRONMAN mark and differs only by the omission of the term “live” from the IRONMANLIVE.COM mark. Using the mark or omissions such as “live” to Complainant’s registered mark IRONMANLIVE.COM is insufficient to negate the identical of confusingly similar aspects of the disputed domain name that Respondent purchased pursuant to Policy ¶ 4(a)(i). See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark).
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Complainant established by extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained within the disputed domain name but for the minor omission. Complainant alleged that Respondent has no such rights to or legitimate interests. Complainant further alleged that although it has licensed the IRONMAN mark to others it has not licensed the mark to Respondent nor in any way given Respondent the right to use Complainant’s protected family of marks.
Once Complainant
makes a prima facie case regarding Policy ¶ 4(a)(ii), the burden shifts
to Respondent to establish rights or legitimate interests in the domain
name. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the
complainant has asserted that the respondent does not have rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once the complainant asserts that the respondent does not have
rights or legitimate interests with respect to the domain, the burden shifts to
the respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the complainant that the respondent
does not have rights or legitimate interests is sufficient to shift the burden
of proof to the respondent to demonstrate that such rights or legitimate
interests do exist).
Complainant also
asserted that Respondent is using the <ironman.com>
domain name to redirect
Internet users interested in Complainant’s IRONMANLIVE.COM products and
services to Respondent’s website that features links to a variety of
third-party products and services unrelated to Complainant’s business. Respondent is using the disputed domain name
to redirect Internet users interested in Complainant’s products and services to
Respondent’s website; this is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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); see also
Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb.
Forum June 24, 2002) (holding that the respondent’s use of the disputed domain
name to redirect Internet users to commercial websites, unrelated to the
complainant and presumably with the purpose of earning a commission or
pay-per-click referral fee did not evidence rights or legitimate interests in
the domain name); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457
(Nat. Arb. Forum May 6, 2003) (holding
that the respondent’s use of the complainant’s mark and the goodwill
surrounding that mark as a means of attracting Internet users to an unrelated
business was not a bona fide offering of goods or services).
Further, Complainant alleged Respondent is not and has
never been commonly known by the <ironman.com>
domain name and that
Respondent has not been licensed or otherwise authorized by Complainant to use
the IRONMANLIVE.COM mark.
The Panel finds that Respondent has not established rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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).
In addition, Complainant asserted that Respondent originally used the <ironman.com> domain name to redirect Internet users interested in Complainant’s IRONMANLIVE.COM products and services to an adult-oriented website. Respondent’s use of a domain name confusingly similar to Complainant’s IRONMANLIVE.COM mark to redirect Internet users interested in Complainant’s products and services to an adult-oriented website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that the respondent had no rights or legitimate interests in the disputed domain name); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
The Panel finds that Complainant
satisfied ICANN Policy ¶ 4(a)(ii).
Complainant asserted that Respondent is using the <ironman.com> domain name for Respondent’s commercial gain by diverting Internet users interested in Complainant’s IRONMANLIVE.COM products and services to Respondent’s commercial website featuring links to products and services unrelated to Complainant’s business. The Panel finds that Respondent’s opportunistic use of a domain name that is confusingly similar to Complainant’s mark to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where the respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to the respondent’s site).
Moreover, the Panel finds that Respondent’s use of the <ironman.com> domain name to redirect Internet users interested in Complainant’s IRONMANLIVE.COM products and services to an adult-oriented website constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to pornographic websites).
The Panel finds that Complainant satisfied ICANN
Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ironman.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: January 11, 2006
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