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Generic Top Level Domain Name (gTLD) Decisions |
Title 9 Sports, Inc. v. Modern Web
Development
Claim Number: FA0411000359888
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.
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.
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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.
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.
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.
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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