DECISION

Lance Lambros v. William Brown

Claim Number:  FA0310000198963

PARTIES

Complainant is Lance Lambros, Mashpee, MA (“Complainant”) represented by Christopher MacKinnon, 628 Main Street, Mashpee, MA 02649.  Respondent is William Brown, 221 New Road, Avon, CT 06001 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <capecodsportswear.com>, registered with Namesdirect.

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 1, 2003; the Forum received a hard copy of the Complaint on October 1, 2003.

On October 2, 2003, Namesdirect confirmed by e-mail to the Forum that the domain name <capecodsportswear.com> is registered with Namesdirect and that Respondent is the current registrant of the name. Namesdirect has verified that Respondent is bound by the Namesdirect 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 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 3, 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@capecodsportswear.com by e-mail.

Having received no timely 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.

Respondent did communicate via e-mail to the Administrative Panel (the "Panel") that it would transfer the domain name to Complainant.  Respondent also requested compensation from the Panel.  However, this communication occurred two days after the Response deadline, did not conform to the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), contained no substantive defenses to Complainant’s allegations, and asked for relief that is outside the scope of this Panel’s authority.

On November 6, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Panel finds that the Forum has discharged its responsibility under Paragraph 2(a) of 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 formal 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 <capecodsportswear.com> domain name is confusingly similar to Complainant’s CAPE COD SPORTSWEAR, LTD. mark.

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

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

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

FINDINGS

Complainant registered the CAPE COD SPORTSWEAR, LTD. mark with the Secretary of the Commonwealth of Massachusetts on March 4, 1997.  Complainant has been doing business as CAPE CODE SPORTSWEAR, LTD. since February 10, 1995.  The mark is used for sport and corporate apparel, as well as accessories for that apparel.

Respondent initially registered <capecodsportswear.com> on January 25, 2001 and renewed its registration on December 6, 2002.  At the time the Complaint was filed, the disputed domain name was used to sell football administration software.  Previously, the domain name was used to offer competing services with CAPE COD SPORTSWEAR, LTD.   Included on the website was the name of Complainant.  Complainant submitted affidavits of customers who placed orders on the website, and mistakenly believed that Respondent’s site was owned and operated by Complainant.  Respondent offered to sell the domain name to Complainant for $2,500. 

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 it rights in the CAPE COD SPORTSWEAR, LTD. mark through registration with the State of Massachusetts and continuous use in commerce since 1995.

Respondent’s domain name <capecodsportswear.com> is confusingly similar to Complainant’s mark because it contains CAPE COD SPORTSWEAR, LTD. in its entirety, except for the “LTD.” ending, which is merely a business designation.  See Nikon, Inc. and Nikon Corp. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; see also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 29, 2001) holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name.

Therefore, Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has asserted Respondent lacks rights and legitimate interests in <capecodsportswear.com>.  Respondent must provide evidence of its rights or legitimate interests.  Since Respondent has not submitted a formal Response to the Complaint, this Panel may infer that it lacks rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See 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; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name.

Furthermore, Respondent had been using the disputed domain name for business purposes that were in competition with Complainant.  Thus, Internet users attempting to find Complainant by typing in its business name would be directed to Respondent’s site.  Only later did Respondent change the content of the website to reflect a different use.  This conduct does not qualify as a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a making of a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services; see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods.

In addition, there has been no evidence put forward that Respondent has been commonly known by <capecodsportswear.com>, pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee 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 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; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name.

Therefore, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent attempted to sell the disputed domain name to Complainant for $2500, an asking price that far exceeds Respondent’s out-of-pocket expenses related to the domain name.  This excessive price indicates that a primary purpose for the registration and use of the domain name was to sell it to Complainant in bad faith pursuant to Policy ¶ 4(b)(i).  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) finding bad faith where Respondent offered domain names for sale; see also Prudential Ins. Co. of Am. v. TPB Fin. a/k/a B. Evans, FA 105218 (Nat. Arb. Forum Apr. 8, 2002) finding bad faith registration and use pursuant to Policy ¶ 4(b)(i) where Respondent offered to sell the domain name for $900.

Furthermore, Respondent used the disputed domain name in competition with Complainant.  Respondent even included Complainant’s personal name on the website, leaving Internet users with the assumption that it was Complainant’s business they were doing business with.  Respondent’s use of the website for this disruptive purpose evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii) & (iv).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) finding that the Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion due to the competitive relationship between Complainant and Respondent; see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business; see also H-D Mich., Inc. v. Petersons Auto. a/k/a Larry Petersons, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s marks and likeness.   

Therefore, Complainant has established Policy ¶ 4(a)(iii).

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

Sandra Franklin, Panelist

Dated:  November 19, 2003

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