World Triathlon Corporation v. Ironmancoach.com and Ironmanprogram.com
Claim Number: FA0609000794684
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 Ironmancoach.com and Ironmanprogram.com (“Respondent”), 1145 Cerise Drive, Kelowna, BC V1Y 9J9, CA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ironmancoach.com> and <ironmanprogram.com>, registered with Tucows 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 15, 2006.
On September 19, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <ironmancoach.com> and <ironmanprogram.com> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows 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 September 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 11, 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@ironmancoach.com and postmaster@ironmanprogram.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ironmancoach.com> and <ironmanprogram.com> domain names are confusingly similar to Complainant’s IRONMAN mark.
2. Respondent does not have any rights or legitimate interests in the <ironmancoach.com> or <ironmanprogram.com> domain names.
3. Respondent registered and used the <ironmancoach.com> and <ironmanprogram.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, World Triathlon Corporation, has organized and promoted various triathlon competitions under its IRONMAN marks over the course of the past twenty-eight years, including the IRONMAN TRIATHLON World Championship. Since at least 1984, Complainant has licensed its mark to various manufacturers and retailers. Complainant currently has forty-one IRONMAN marks registered with the United States Patent and Trademark Office (hereinafter “USPTO”) (including Reg. No. 1,258,881 issued November 22, 1983 and Reg. No. 1,353,313 issued August 6, 1985), as well as 130 registered foreign trademarks.
Respondent’s <ironmancoach.com> and <ironmanprogram.com> domain names, which were registered on March 2, 2000, initially resolved to parked web pages with notices that stated “this is the future home of [one of the above-referenced domain names].” Currently, the <ironmancoach.com> and <ironmanprogram.com> domain names resolve to the website for Wood Lake Cable, Ltd., a cable communications company located in British Columbia, Canada.
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.
Complainant has established rights in the IRONMAN mark through registration of the mark with the USPTO. 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.”).
By mere addition of the common terms “coach” and “program” to the end of Complainant’s mark without any asserted justification for such action, Respondent has failed to sufficiently distinguish either the <ironmancoach.com> domain name or the <ironmanprogram.com> domain name from Complainant’s IRONMAN mark. Further, in light of Respondent’s failure to respond or appear, no justification could be reasonably inferred. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). As such, the disputed domain names are confusingly similar to the mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”).
This finding is further supported by the fact that the words “coach” and “program” are not only generic, but relate to Complainant’s well-established business of organizing and promoting triathlon competitions. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
In light of the foregoing analysis, the Panel finds that Complainant has satisfied Policy 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <ironmancoach.com> and <ironmanprogram.com> domain names. Provided Complainant makes a prima facie case under Policy ¶ 4(a)(ii), Respondent then bears the burden of rebutting this presumption. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Thus, the Panel finds that Complainant’s assertion that Respondent lacks legitimate rights or legitimate interests in the disputed domain names constitutes a prima facie case pursuant to the Policy.
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, despite the presumptive effect of
Respondent’s inaction, the Panel must still analyze the relevant factors under
Policy ¶ 4(c). See Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall
draw such inferences’ from the Respondent’s failure to comply with the rules
“as it considers appropriate.”); see also EK Success, Ltd. v. Yi-Chi,
CPR0314 (CPR June 12, 2003) (“[T]he Respondent's
default cannot simply be construed as an admission of the allegations contained
in the Complaint.”). As such, the Panel
will examine the record proceed in order to determine of Respondent has any
rights or legitimate interests in Complainant’s IRONMAN marks under Policy ¶
4(c).
In connection with registering the disputed domain names, Respondent simply listed each domain name, <ironmancoach.com> and <ironmanprogram.com>, as the registrant for each respective name. While the record clearly indicates that Respondent performed this mandatory and perfunctory task, the record is void of any other attempt by Respondent to establish that he is commonly known by either of the disputed domain names. Indeed, given the well-established nature of Complainant’s IRONMAN marks, Respondent must put forth strong evidence to prevail on this argument. This has simply not been done here. As such, Respondent has no rights or legitimate interests under Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”)
Moreover, Respondent’s <ironmancoach.com> and <ironmanprogram.com>
domain names resolve to the website of a cable communications
provider. Without any evidence to the
contrary, it can be reasonably inferred that Respondent used Complainant’s
entire IRONMAN mark in its domain names purely for commercial gain, presumably
in the form of click-through fees (this finding is buttressed by Respondent’s
offer to sell both disputed domain names to Complainant, discussed below). As such, Respondent’s use of the disputed
domain names does not consitute a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under
Policy ¶ (4)(c)(iii). See 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).”); see also Am.
Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb.
Forum Sept. 26, 2003) (“Respondent's registration and use of the
<gayaol.com> domain name with the intent to divert Internet users to
Respondent's website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”)
In light of the foregoing analysis, the Panel finds that Respondent has failed to show any rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). As such, Complainant has satisfied policy ¶ 4(a)(ii).
Under Policy ¶ 4(a)(iii), Complainant need only establish one of any number of patterns of conduct that give rise to an inference of Respondent’s bad faith registration and use of Complainant’s mark. Examples of such conduct are set forth in Policy ¶ 4(b), however, Complainant’s inability to plead facts that fall under this section does not dispose of a Policy ¶ 4(a)(iii) analysis. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in ¶ 4(b) of the Policy is not an exhaustive list of bad faith evidence).
On August 5, 2006, Respondent offered to sell Complainant both of the disputed domain names for an unspecified price. The Panel could only estimate what Respondent’s out-of-pocket costs were in connection with registering the two disputed domain names. However, it need not do so here, particularly in light of Respondent’s default, as a number of previous panels have inferred bad faith solely from Respondent’s offer to sell, and the Panel deems it appropriate to follow those decisions here. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Moreover, Respondent’s bad faith is evidenced by its capitalization on the similarity between the <ironmancoach.com> and <ironmanprogram.com> domain names and Complainant’s IRONMAN marks. Given the confusing similarity between the domain names and Complainant’s marks, it is reasonable to infer that internet users seeking information about triathlons and related information would be misdirected to Respondent’s confusingly similar domain names. Respondent’s sole use of these domain names involved a parked notice (which, incidentally, provided nothing more than contact information for Respondent’s “technical contatct,” who happened to be the same contact listed for Wood Lake Cable, Ltd.) and links to Wood Lake Cable’s home page. These circumstances indicate that Respondent sought to benefit commercially from Complainant’s well-established goodwill. This is precisely the sort of conduct that falls under Policy ¶ 4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names. 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).
Taking into account all of the facts and circumstances presented by the record before us, the Panel finds that Complainant has shown that Respondent’s conduct falls within Policy ¶ 4(b) and thus has satisfied the requirements of 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 <ironmancoach.com> and <ironmanprogram.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 1, 2006
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