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Title 9 Sports, Inc. v. Modern Web Development [2004] GENDND 1534 (22 December 2004)


National Arbitration Forum

national arbitration forum

DECISION

Title 9 Sports, Inc. v. Modern Web Development

Claim Number:  FA0411000359888

PARTIES

Complainant is Title 9 Sports, Inc. (“Complainant”), represented by Teresa Federer, of Bingham McCutchen LLP, 3 Embarcadero Center, Suite 1800, San Francisco, CA 94111.  Respondent is Modern Web Development (“Respondent”), Post Office Box 908, George Town, Grand Cayman, GT KY.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <titlenine.com>, registered with 123 Easy Domain Names d/b/a 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 electronically on November 1, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 4, 2004.

On November 2, 2004, 123 Easy Domain Names d/b/a Signature Domains confirmed by e-mail to the National Arbitration Forum that the domain name <titlenine.com> is registered with 123 Easy Domain Names d/b/a Signature Domains and that Respondent is the current registrant of the name. 123 Easy Domain Names d/b/a Signature Domains has verified that Respondent is bound by the 123 Easy Domain Names d/b/a 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 November 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 29, 2004 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@titlenine.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On December 5, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.

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 <titlenine.com> domain name is confusingly similar to Complainant’s TITLE NINE SPORTS mark.

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

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

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

FINDINGS

Complainant, the largest provider of women’s athletic apparel in the United States, is the owner of numerous trademark registrations for marks that incorporate TITLE NINE, including U.S. trademark Reg. Nos. 2,307,098 for TITLE NINE SPORTS and 2,560,931 and 2,293,883 for 9 TITLE NINE SPORTS (registered on January 11, 2000, April 16, 2002, and November 23, 1999, respectively). Complainant has also identified itself using the TITLE NINE name and logo on its apparel, catalogs, advertising, and website without the accompanying generic word “sports.”

Complainant first used its TITLE NINE and TITLE NINE SPORTS marks in connection with its goods and services in 1989. Complainant has used its marks extensively and continuously since that time. Since 1989, Complainant has spent tens of millions of dollars in conjunction with advertising and promoting its marks, services, products, and image, thereby creating substantial goodwill in the marketplace. Complainant has invested $36 million since 1999 alone in advertising and promoting its goods and services in connection with its marks. Complainant also operates a website at the <title9sports.com> domain name. Complainant refers to itself simply as “Title Nine” on its own website and in its product catalogs.

Respondent registered the <titlenine.com> domain name on May 20, 2002. Respondent has not used the disputed domain name for any purpose since Respondent registered the <titlenine.com> domain name more than two and a half years ago. The disputed domain name resolves to a placeholder “coming soon” website created by Respondent’s domain name registrar.

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 that it has rights in the TITLE NINE SPORTS mark through registration with the United States Patent and Trademark Office and through the use of the mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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. Respondent has the burden of refuting this assumption).

The <titlenine.com> domain name is confusingly similar to Complainant’s TITLE NINE SPORTS registered trademark because the domain name merely removes the generic word “sports,” removes a space between the remaining words, and adds the generic top-level domain “.com” to the mark. Moreover, the record shows that “Title Nine” identifies Complainant and its products independently of the word “sports.” Neither of these differences sufficiently distinguish the disputed domain name from Complainant’s registered trademark. See 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 Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark); see also Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name, “hammondsuddards.net,” is essentially identical to Complainant's mark, Hammond Suddards Edge, where the name “Hammond Suddards” identifies Complainant independently of the word “Edge”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant is able to establish a prima facie case by showing that Respondent does not qualify for the three “safe harbors” provided under Policy ¶¶ 4(c)(i)-(iii).  Such a showing shifts Complainant’s burden to Respondent, who must come forward with evidence rebutting Complainant’s allegations in order to prevail on this element.  In this case, Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the <titlenine.com> domain name.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “[p]roving that the Respondent has no rights or legitimate interests in respect of the [d]omain [n]ame 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 [R]espondents 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”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Since Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the <titlenine.com> domain name, the burden is shifted to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.  In this proceeding, Respondent has not submitted a Response.  Thus, Respondent has failed to present any circumstances under which it could substantiate rights or legitimate interests in the <titlenine.com> domain name.  Furthermore, because Respondent has failed to submit a Response in this proceeding, the Panel may accept as true all reasonable allegations submitted by Complainant in the Complaint.  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Respondent has made no use of the <titlenine.com> domain name; as such, it cannot be said to be making a bona fide offering of goods or services under the domain name, nor can it be said to be making a legitimate noncommercial or fair use of the domain name. In these circumstances, Policy ¶¶ 4(c)(i) and (iii) are inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question).

Furthermore, no evidence in the record suggests that Respondent is commonly known by the <titlenine.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has not used the <titlenine.com> domain name since its registration over two and a half years ago. Notwithstanding the possibility that Respondent initially registered the domain name in good faith, such passive holding amounts to bad faith use and registration under Policy ¶ 4(a)(iii).  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

Furthermore, Respondent’s registration of the disputed domain name, a domain name that incorporates Complainant’s well-known mark while merely omitting a generic word, suggests that Respondent knew of Complainant’s rights in the TITLE NINE SPORTS mark. Additionally, Complainant’s trademark registration on file at the United States Patent and Trademark Office gave Respondent constructive notice of Complainant’s mark. Therefore, the Panel finds that Respondent likely chose the <titlenine.com> domain name based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been 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 <titlenine.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  December 22, 2004


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