DECISION

Atlanta Lawn Tennis Association, Inc. v. Modern Web Development

Claim Number:  FA0310000203203

PARTIES

Complainant is Atlanta Lawn Tennis Association, Inc. (“Complainant”), represented by Jeffrey B. Sladkus, of Womble Carlyle Sandridge & Rice, PLLC, 1201 West Peachtree Street, Suite 3500, Atlanta, GA, USA, 30309. Respondent is Modern Web Development (“Respondent”), PO Box 908, George Town Grand Cayman, GTKY.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <altatennis.com>, registered with 123 Easy Domain Names d/b/a Signature Domains (hereinafter “Signature Domains”).

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 16, 2003; the Forum received a hard copy of the Complaint on October 20, 2003.

On October 21, 2003, Signature Domains confirmed by e-mail to the Forum that the domain name <altatennis.com> is registered with Signature Domains and that Respondent is the current registrant of the name. Signature Domains has verified that Respondent is bound by the Signature Domains 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 October 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 2003 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@altatennis.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 20, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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."  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <altatennis.com> domain name is confusingly similar to Complainant’s ALTA mark.

2. Respondent does not have any rights or legitimate interests in the <altatennis.com> domain name.

3. Respondent registered and used the <altatennis.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Atlanta Lawn Tennis Association, Inc., is a non-profit organization devoted to the development of tennis for recreation and physical fitness through league play and tournaments, and has been using the trademarks ALTA (e.g. U.S. Reg. No. 2,139,106, registered on February 24, 1998) and ATLANTA LAWN TENNIS ASSOCIATION (e.g. U.S. Reg. No. 1,132,196, registered on April 1, 1980) since at least 1934 in association with the same. To date, Complainant has grown to schedule league play for adult and junior tennis teams throughout the state of Georgia for over 80,000 active members. Complainant is also the owner of the <altatennis.net>, <altatennis.org> and <altatennis.biz> domain names.

Respondent, Modern Web Development, registered the <altatennis.com> domain name on March 29, 2002, without license or permission to use Complainant’s ALTA mark for any purpose. Respondent uses the domain name to host a search engine webpage that also displays a series of pop-up advertisements.

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the ALTA mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through use of the mark in commerce since 1934.

Respondent’s <altatennis.com> domain name is confusingly similar to Complainant’s ALTA mark. The addition of the word “tennis” to Complainant’s ALTA mark actually serves to increase confusing similarity between the domain name and the mark, as the word “tennis” is one part of the acronym “Atlanta Lawn Tennis Association.” See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Accordingly, the Panel finds that the <altatennis.com> domain name is confusingly similar to Complainant’s ALTA mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses Complainant’s ALTA mark, without permission from Complainant, to draw Internet users to a generic search engine website that features a variety of pop-up advertisements. Unauthorized use of a trademark holder’s mark for these commercial purposes has been consistently held to be outside the scope of Policy ¶¶4(c)(i) and (iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Sony Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that Respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy).

Relying upon Complainant’s assertion that Respondent does not operate a business under the mark ALTATENNIS, and sells no products under that mark, the Panel finds that Respondent is not “commonly known by” the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Tercent Inc. v. 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 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").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <altatennis.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Considering that Respondent simply operates a generic search engine website at the disputed domain name—a website that also uses pop-up advertising to gain revenue—the Panel can conceive of no good reason for Respondent to be using the ALTA mark in its domain name, unless it was seeking to capitalize on the goodwill that Complainant has built up around that mark. Thus, the Panel infers that Respondent registered the disputed domain name with the intention of creating a likelihood of confusion with Complainant’s mark, for Respondent’s own commercial gain. Such activities evidence bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

The Panel thus finds that Respondent registered and used the <altatennis.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

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 <altatennis.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  December 1, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/1073.html