R & L Sports Co. v. PaintballAuction.com, LLC
Claim Number: FA0603000669868
Complainant is R & L Sports Co. (“Complainant”), represented by Ryan Kody Jones, P.O. Box 2974, Greensboro, NC 27402. Respondent is PaintballAuction.com, LLC (“Respondent”), 360 Park Road, Arcade, NY 14009.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <paintballcentral.com>, registered with Network Solutions, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2006.
On March 31, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <paintballcentral.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 2, 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@paintballcentral.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2006, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <paintballcentral.com> domain name is identical to Complainant’s PAINTBALL CENTRAL mark.
2. Respondent does not have any rights or legitimate interests in the <paintballcentral.com> domain name.
3. Respondent registered and used the <paintballcentral.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, R & L Sports Co. has used the PAINTBALL CENTRAL mark since 1998 in connection with its business of selling paintball gaming supplies and accessories. Complainant conducts its business from retail stores located throughout North Carolina, including Greensboro, NC. Complainant has registered the PAINTBALL CENTRAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,048,095 issued January 24, 2006, filed November 19, 2004). Complainant also maintains an internet presence in connection with its business at its <pballcentral.com> and <pbcsportspark.com> domain names.
Respondent registered the <paintballcentral.com> domain name on April 9, 1999. Internet users who access this domain name are directed to a website that features links to other websites offering products in competition with Complainant as well as products unrelated to Complainant.
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.
Although Complainant has registered the PAINTBALL CENTRAL
mark with the USPTO, Respondent’s registration of the domain name predates
Complainant’s registration of the mark.
However, the Panel finds that Complainant is not required to own a
trademark registration for the PAINTBALL CENTRAL mark in order to establish
rights to the mark pursuant to Policy ¶ 4(a)(i). See Great Plains
Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The
Policy does not require that a trademark be registered by a governmental
authority for such rights to exist.”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist).
Complainant asserts that the PAINTBALL CENTRAL mark has acquired sufficient secondary meaning to establish common law rights based on Complainant’s use of the mark in connection with its business. Complainant has operated under the PAINTBALL CENTRAL mark since 1998 in connection with its retail store business. The Panel determines that Complainant has established secondary meaning in the PAINTBALL CENTRAL mark for the purpose of demonstrating common law rights in the mark pursuant to Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s <paintballcentral.com> domain name
is identical to Complainant’s PAINTBALL CENTRAL mark, in that it wholly
incorporates the mark with the addition of the top-level domain “.com.” The addition of a top-level domain to
Complainant’s mark does not distinguish the disputed domain name from the
mark. Therefore, Respondent’s domain
name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See 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); see also 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 . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the domain name. See 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 presented a prima facie case, and will consider whether the evaluation of the evidence on record demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent’s <paintballcentral.com> domain name
is identical to Complainant’s PAINTBALL CENTRAL mark, and Internet users who
access this domain name are redirected to a website that features links to
websites offering products both in competition with and unrelated to
Complainant. The Panel presumes Respondent
receives click-through fees in exchange for diverting Internet users to these
other websites. Therefore, Respondent’s
use of the disputed domain name is not in connection with 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 WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy); 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).”).
The WHOIS database entry for the <paintballcentral.com> domain name lists the administrative contact for the domain name as “Scott Dyke” of “paintballauction.com.” The WHOIS database entry contains no evidence that Respondent is commonly known by the <paintballcentral.com> domain name, and there is no other evidence on record that Respondent has ever been commonly known by the disputed domain name. The Panel infers that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel assumes that Respondent receives click-through
fees in exchange for diverting Internet users to other websites. Respondent’s <paintballcentral.com>
domain name incorporates Complainant’s PAINTBALL CENTRAL mark in its
entirety. Moreover, because
Respondent’s website features links labeled with words that appear to relate to
Complainant’s business, such as “paintball” and “paintball gun,” Internet users
may mistakenly believe that the resulting website is affiliated with
Complainant. Use of the disputed domain
name in this fashion constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain); see
also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“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.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <paintballcentral.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 22, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum