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Generic Top Level Domain Name (gTLD) Decisions |
Don Best Sports v. SZK.com c/o Michele
Dinoia
Claim
Number: FA0411000362036
Complainant is Don Best Sports (“Complainant”), 4875
Nevso Dr, Las Vegas, NV 89103.
Respondent is SZK.com c/o Michele Dinoia (“Respondent”), Via Trilussa 11, Pineto, TE 64025,
ITALY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <donbestsports.com>, registered with Onlinenic,
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
8, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 9, 2004.
On
November 8, 2004, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <donbestsports.com> is
registered with Onlinenic, Inc. and that Respondent is the current registrant
of the name. Onlinenic, Inc. has verified that Respondent
is bound by the Onlinenic,
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
November 11, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 1, 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@donbestsports.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 10, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed Hon.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <donbestsports.com>
domain name is identical to Complainant’s DON BEST SPORTS mark.
2. Respondent does not have any rights or
legitimate interests in the <donbestsports.com> domain name.
3. Respondent registered and used the <donbestsports.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
company that provides information and analysis in the area of sports
gambling. Complainant runs a commercial
computer service that displays real time odds, injuries, weather reports and
other relevant information
relating to sports events for gambling
purposes. Since its inception in 1990,
Complainant has developed a reputation as the premier sports gambling
information service. Complainant has
registered the <donbest.com> domain name, where Complainant operates a
website providing Complainants’ commercial
services to subscribers.
Since 1990,
Complainant and Complainant’s predecessor in interest have conducted their
sports information service under the DON BEST
SPORTS mark. Complainant has registered the DON BEST
SPORTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 2,682,398,
issued February 4, 2003).
Respondent
registered the <donbestsports.com> domain name on October 14,
2001. Respondent’s domain name resolves
to a search engine website that links to other websites relating to
professional sports and sports
teams.
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.
Respondent’s
registration of the <donbestsports.com> domain name predated
Complainant’s registration of the DON BEST SPORTS mark with the USPTO. However, registration of a mark with a
governmental authority is unnecessary for a complainant to establish rights in
a mark if a
common law mark has been established. See McCarthy on Trademarks
and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service
mark ‘in which the complainant has rights’ means that ownership of a
registered mark is not required–unregistered or common law trademark
or service
mark rights will suffice” to support a domain name Complaint under the Policy);
see also Great Plains Metromall, LLC v.
Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform
Domain Name Dispute Resolution Policy does not require “that a
trademark be
registered by a governmental authority for such rights to exist”).
Complainant
has established rights in the DON BEST SPORTS mark through ownership of a
common law mark. A common law mark is established
when a Complainant’s goods or
services become distinctive and acquire secondary meaning. Complainant
established that through Complainant’s
long-term, continued use of the mark
since 1990, Complainant’s mark has acquired secondary meaning and has become
distinctive of
Complainant’s services. Thus, Complainant has established
secondary meaning in the DON BEST SPORTS mark through its continued and
exclusive use for the last fifteen years. See 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); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“On
account of long and substantial use of the said name [<keppelbank.com>]
in connection
with its banking business, it has acquired rights under the
common law.”); see also BroadcastAmerica.com,
Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has
common law rights in BROADCASTAMERICA.COM, given extensive use of
that mark to
identify Complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition
with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services).
Respondent’s <donbestsports.com>
domain name is identical to Complainant’s common law mark because it
incorporates Complainant’s mark in its entirety and merely deviates
with the
addition of the generic top-level domain “.com.” Incorporating Complainant’s
mark in its entirety with the mere addition
of a generic top-level domain
renders a domain name identical to a Complainant’s mark with regard to Policy ¶
4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to Complainant's registered
trademark
GAY GAMES); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) (finding that the <bodybyvictoria.com> domain name is identical to
Complainant’s BODY
BY VICTORIA mark); see
also Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain
(gTLD)
“.com” after the name POMELLATO is not relevant).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See 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"); 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).
Respondent is
not using the domain name <donbestsports.com> in connection with a
bona fide offering of goods or services under paragraph 4(c)(i) of the Policy
or a legitimate noncommercial or
fair use under paragraph 4(c)(iii) of the
Policy because Respondent is attempting to capitalize illegitimately on the
fame associated
with Complainant’s DON BEST SPORTS mark by attracting Internet
users to its search engine through the use of a domain name identical
to
Complainant’s mark. 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
a website that pays domain name registrants for referring those users to
its
search engine and pop-up advertisements); see
also Bank of America Corp. v. Out
Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003)
(holding that Respondent’s use of infringing domain names to direct Internet
traffic to
a search engine website that hosted pop-up advertisements was
evidence that it lacked rights or legitimate interests in the domain
name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
capitalizing on the goodwill of the DON BEST SPORTS mark by diverting Internet
users to a search engine website. Since
the disputed domain name contains Complainant’s mark in its entirety, a
consumer searching for Complainant would become confused
as to Complainant’s
affiliation with the resulting search engine website. Therefore, Respondent’s opportunistic use of the disputed domain
name represents bad faith registration and use under Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if Respondent profits from its diversionary use of Complainant's mark when
the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent
is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster
& Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
finding bad faith where Respondent directed Internet users seeking
Complainant’s site to
its own website for commercial gain).
Furthermore,
Complainant alleges that Respondent acted in bad faith by registering and using
a domain name containing Complainant’s
mark.
Since the disputed domain name has no inherent connection to the use of
a search engine website, such evidence supports the Panel’s
inference that
Respondent registered and used the disputed domain name to trade on the
goodwill associated with Complainant’s mark.
Therefore, Respondent’s registration of the disputed domain name,
despite knowledge of Complainant’s interests in the DON BEST SPORTS
mark,
constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See
Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) ("[w]here an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent
to confuse"); see also 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).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <donbestsports.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 22, 2004
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