Rawlings Sporting Goods Company Inc. v. Rawlings Sporting Goods Company Inc
Claim Number: FA0610000812051
Complainant is Rawlings Sporting Goods Company, Inc. (“Complainant”), represented by Bradley P. Hartman of Stinson Morrison Hecker, LLP, 1850 N. Central Ave., Suite 2100, Phoenix, AZ, 85004-4584. Respondent is Rawlings Sporting Goods Company Inc (“Respondent”), 510 Maryville University Dr, St Louis, MO, 63141.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rawlingsgoldglove.com>, registered with Nameview, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 3, 2006; the National Arbitration Forum received a hard copy of the Complaint October 6, 2006.
On October 4, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <rawlingsgoldglove.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc., verified that Respondent is bound by the Nameview, Inc. 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 October 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 6, 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@rawlingsgoldglove.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2006, 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.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <rawlingsgoldglove.com>, is confusingly similar to Complainant’s GOLD GLOVE AWARD, GOLD GLOVE and RAWLINGS GOLD GLOVE AWARD marks.
2. Respondent has no rights to or legitimate interests in the <rawlingsgoldglove.com> domain name.
3. Respondent registered and used the <rawlingsgoldglove.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Rawlings Sporting Goods Company, Inc., holds registrations with the United States Patent and Trademark Office (“USPTO”) for the GOLD GLOVE AWARD (Reg. No. 990,449 issued August 6, 1974), GOLD GLOVE (Reg. No. 1,291,345 issued August 21, 1984) and RAWLINGS GOLD GLOVE AWARD (1,945,584 issued January 2, 1996) marks. Complainant utilizes the marks in connection with its sporting goods business, specifically in connection with baseball gloves and mitts and in connection with the promotion of the game of baseball by rewarding outstanding outfielders.
Respondent registered the <rawlingsgoldglove.com> domain name July 24, 2005. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which features links to third-party websites. Some of the third-party websites are unrelated to Complainant’s business, while others purport to sell Complainant’s products. Still others offer goods and services in direct competition with 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 will draw such inferences as the Panel 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 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 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 established with extrinsic evidence in this proceeding that it holds USPTO registrations for the GOLD GLOVE AWARD, GOLD GLOVE and RAWLINGS GOLD GLOVE AWARD marks, which predate Respondent’s registration of the disputed domain name. The Panel finds that Complainant established rights in the GOLD GLOVE AWARD, GOLD GLOVE and RAWLINGS GOLD GLOVE AWARD marks as required by Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); 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.”).
The disputed domain name, <rawlingsgoldglove.com>,
is confusingly similar to Complainant’s GOLD GLOVE AWARD, GOLD GLOVE and
RAWLINGS GOLD GLOVE AWARD marks. The
disputed domain name contains Complainant’s GOLD GLOVE mark in its entirety and
contains significant components of Complainant’s other marks, including the
terms “rawlings,” “gold” and “glove.”
The only term from Complainant’s marks not included in the disputed
domain name is the term “award.” The
failure to include one term from Complainant’s marks in the disputed domain
name does not differentiate the disputed domain name from Complainant’s
marks. The Panel finds that the
disputed domain name is confusingly similar to Complainant’s marks pursuant to
Policy ¶ 4(a)(i). See Oki Data Ams.,
Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a
domain name wholly incorporates a Complainant’s registered mark is sufficient
to establish identity [sic] or confusing similarity for purposes of the Policy
despite the addition of other words to such marks.”); see also 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the marks contained in the disputed domain name. Complainant asserts that Respondent lacks such rights to and legitimate interests in the disputed domain name. Complainant’s assertion establishes a prima facie case pursuant to the Policy, shifting the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. By not submitting a Response, Respondent failed to present the Panel with any evidence or arguments to suggest that it does have rights to or legitimate interests in the disputed domain name. Despite Respondent’s failure to respond, the Panel evaluates the available evidence to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).
Respondent is using the disputed domain name to operate a
website filled with links to third-party websites. Many of the third-party websites either purport to sell
Complainant’s goods or offer sporting goods in direct competition with
Complainant. Other links are unrelated
to Complainant’s business. Presumably,
Respondent is receiving pay-per-click referral fees from the posted links. The Panel finds that such use is not 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 eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s
entire mark in domain names makes it difficult to infer a legitimate use);
see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar.
17, 2003) (finding that 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 TM Acquisition Corp. v. Sign Guards, FA 132439
(Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use
of the complainant’s marks to send Internet users to a website which displayed
a series of links, some of which linked to the complainant’s competitors, was
not a bona fide offering of goods or services).
While Respondent’s WHOIS information was updated after this
Complaint was first submitted to identify the registrant of the disputed domain
name as “Rawlings Sporting Goods Company Inc,” no other evidence suggests that
Respondent is commonly known by that name, or by anything else similar to the
disputed domain name. Additionally,
Complainant asserts without contradiction that Respondent is not affiliated
with Complainant and does not have authorization from Complainant to reflect
Complainant’s marks in a domain name.
The Panel finds that Respondent is not commonly known by the disputed
domain name as contemplated by Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum
June 17, 2003) (finding that the respondent
was not “commonly known by” the <shantiyogaworks.com> domain name
despite listing its name as “Shanti Yoga Works” in its WHOIS contact
information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name.”); see also City News & Video v.
Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although
Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is
no evidence before the Panel to indicate that Respondent is, in fact, commonly
known by the disputed domain name <citynewsandvideo.com> pursuant to
Policy ¶ 4(c)(ii).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith in registering and using a domain name that contains Complainant’s protected mark. Internet users seeking Complainant’s genuine website may instead find themselves redirected to Respondent’s website. Once at Respondent’s website, Internet users may follow links to the commercial websites of Complainant’s competitors, doing business with those competitors instead of with Complainant. The Panel finds that Respondent’s use disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The <rawlingsgoldglove.com> domain name is
confusingly similar to Complainant’s GOLD GLOVE AWARD, GOLD GLOVE and RAWLINGS
GOLD GLOVE AWARD marks. This confusing
similarity may cause Internet users to be misdirected to Respondent’s
website. Respondent appears to be
capitalizing on this confusion by collecting pay-per-click referral fees from
the links posted on its website. The
Panel finds that Respondent’s use evidences bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also
AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a
website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes).
The Panel finds that Complainant 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 <rawlingsgoldglove.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 21, 2006.
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