DECISION

Pacific Cycle, LLC v. Bestinfo a/k/a David Webb

Claim Number:  FA0403000247972

PARTIES

Complainant is Pacific Cycle, LLC (“Complainant”), represented by Brian G. Gilpin, of Godfrey & Kahn, S.C., 780 No. Water St., Milwaukee, WI 53202.  Respondent is Bestinfo a/k/a David Webb (“Respondent”), 2138 W. Buckingham Rd. # 32, Richardson, TX 75081.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <schwinnbikes.com>, registered with R&K GLOBALBUSINESSSERVICES, INC. d/b/a 000DOMAINS.com.

PANEL

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 18, 2004; the Forum received a hard copy of the Complaint on March 22, 2004.

On March 19, 2004, R&K GLOBALBUSINESSSERVICES, INC. d/b/a 000DOMAINS.com confirmed by e-mail to the Forum that the domain name <schwinnbikes.com> is registered with R&K GLOBALBUSINESSSERVICES, INC. d/b/a 000DOMAINS.com and that Respondent is the current registrant of the name. R&K GLOBALBUSINESSSERVICES, INC. d/b/a 000DOMAINS.com has verified that Respondent is bound by the R&K GLOBALBUSINESSSERVICES, INC. d/b/a 000DOMAINS.com 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 March 24, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 13, 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@schwinnbikes.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 April 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 <schwinnbikes.com> domain name is confusingly similar to Complainant’s SCHWINN mark.

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

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

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

FINDINGS

Complainant, Pacific Cycle, is a worldwide leader in designing, marketing, and distributing high quality bicycles and related products to both professional and recreational users.

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the SCHWINN mark (e.g. Reg. No. 1,909,911, issued 1921; Reg. No. 1,902,797, issued January 24, 1972; Reg. No. 1,909,799, issued January 1992).

Complainant has been offering high-quality bicycle products since at least as early as 1895. Complainant has spent years and millions of dollars developing and marketing its bicycle products. Complainant is known for several major innovations in the bicycle industry, including the bicycle balloon tire introduced in 1933. Complainant has achieved great success and has become a well-known brand in the industry.

Complainant’s main website is located at the <schwinnbike.com> domain name, where consumers can access information about Complainant’s products and conduct their business with Complainant online.

Respondent registered the <schwinnbikes.com> domain name on March 13, 2003. Respondent is using the domain name to redirect Internet users to its own commercial website that offers search services, including services that offer bicycle products, as well as pop-up banners and 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 that it has rights in the SCHWINN mark through registration with the United States Patent and Trademark Office and through the use of its mark in commerce for over one hundred years. 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).

Respondent’s <schwinnbikes.com> domain name is confusingly similar to Complainant’s SCHWINN mark because the domain name incorporates Complainant’s mark in its entirety and only deviates with the addition of the generic or descriptive term “bikes,” a term that describes Complainant’s business. The mere addition of a generic or descriptive term to Complainant’s registered mark, particularly when the term describes Complainant’s business, renders the domain name confusingly similar to Complainant’s mark with regard to Policy ¶ 4(a)(i). See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also 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); see also America Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no rights or legitimates interest is sufficient to shift the burden of proof to Respondent to demonstrate that such rights or legitimate interests do exist); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with Respondent to demonstrate that it has rights or legitimate interests).

Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true).

Respondent is using the <schwinnbikes.com> domain name to divert Internet traffic intended for Complainant to a website that offers search services and links to other websites, including links to websites that offer bicycle products in competition with Complainant’s products. Furthermore, Respondent’s website diverts Internet users to a website that features advertisements and pop-up banners and it is likely that Respondent receives monetary compensation for redirecting Internet users to these websites. Respondent’s use of a domain name confusingly similar to Complainant’s SCHWINN mark to redirect Internet users interested in Complainant’s products to a commercial website that offers search services, links to other websites, advertisements and pop-up banners, is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services); 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); see also 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).

Moreover, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <schwinnbikes.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 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").

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

Registration and Use in Bad Faith

Respondent registered the domain name for its own commercial gain. Respondent’s domain name redirects Internet users who search under Complainant’s well-known SCHWINN mark to Respondent’s commercial website which offers search services and pop-up banners and advertisements, through the use of a domain name confusingly similar to Complainant’s mark. Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); 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); 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); see also 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)).

Respondent registered the domain name for the primary purpose of disrupting Complainant’s business by diverting Internet traffic intended for Complainant to Respondent’s website, which offers search services for and links to websites offering directly competing bicycle products. Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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 Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

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

                                                                                                                                          DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <schwinnbikes.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  May 4, 2004

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