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Lance Armstrong Foundation v. CSA Marketing [2005] GENDND 1789 (13 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lance Armstrong Foundation v. CSA Marketing

Case No. D2005-0886

1. The Parties

The Complainant is Lance Armstrong Foundation, Austin, Texas, United States of America, represented by DLA Piper Rudnick Gray Cary US, LLP, United States of America.

The Respondent is CSA Marketing, West Covina, California, United States of America, represented by Chris Angeles, West Covina, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mylivestrong.com> (“the Domain Name”) is registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2005. On August 19, 2005, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On August 22, 2005, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 13, 2005. The Response was filed with the Center on August 26, 2005.

The Center appointed W. Scott Blackmer, Mark Partridge and Paul C. Van Slyke as panelists in this matter on September 29, 2005. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The following undisputed facts are established by the declarations and supporting documents submitted by the Complainant, the Respondent’s signed Response, and a review of the relevant websites.

The Complainant Lance Armstrong Foundation is a nonprofit corporation organized under the laws of the State of Texas, United States of America, and headquartered in Austin, Texas. The foundation was established in 1997 by champion cyclist and cancer survivor Lance Armstrong to support health research, advocacy, and survivorship education.

In 2004 the Complainant began selling yellow LIVESTRONG bracelets for $1 apiece to heighten public awareness about cancer survivorship issues and to raise money for its charitable programs. This campaign has been highly successful, selling more than 50 million LIVESTRONG bracelets by September 2005. Notably, more than 20 million LIVESTRONG bracelets were sold by the time the Respondent registered the Domain Name in late 2004.

The Complainant has two pending trademark applications before the United States Patent and Trademark Office (USPTO) for LIVESTRONG word and design marks, in connection with jewelry, clothing, and educational and fundraising services. The federal applications were filed in May and July 2004, respectively. According to the May 2004 application, the LIVESTRONG mark was first used in commerce in December 2003.

In addition, the Complainant holds a New York State trademark registration for the LIVESTRONG mark, as well as a New York State service mark registration. Both registrations were issued on November 22, 2004. The New York registrations indicate that the mark was first used in the United States as a service mark in December 2003, and as a trademark in May 2004.

The Complainant operates several websites, including those at <livestrong.org>, <laf.org>, and <store-laf.org>, where the Complainant advertises and sells wristbands inscribed with the LIVESTRONG mark. The websites display the mark with the TM symbol asserting trademark rights.

The Respondent CSA Marketing registered the Domain Name on December 5, 2004, showing the same postal address as that of its representative in this proceeding, Chris Angeles. Mr. Angeles registered at least two other domain names incorporating the LIVESTRONG mark in late 2004, <livestrongbracelets.net> and <talk-livestrong.com>. These are the subject of another pending UDRP proceeding, Lance Armstrong Foundation v. Chris Angeles, WIPO Case No. D2005-0888. Mr. Angeles corresponded with the Complainant concerning all three domain names, and he submitted a single online Response deemed to apply to both UDRP proceedings.

As shown in screenshots accompanying the Complaint, in February 2005 the Domain Name resolved to a website headed “CSA Marketing” and advertising yellow “Livestrong” bracelets (for $4.95 apiece), as well as pink “breast cancer” bracelets and others representing support for AIDS and ovarian cancer initiatives or bearing slogans such as “Livve Long,” “Peace,” “Green Peace,” “U.S.A.,” and “Jesus Loves Me.” The text of the website read in part as follows:

“These Livestrong Bracelets are the ones that you see almost everywhere. Since May 2004, the total sales of these bracelets have exceeded more than 20 million pieces. That 20 million pieces is already about 6% of the total population in the United States.

“They normally retail for $1.00 each at LAF.org, however a backorder status of 3-4 weeks… We do sell them for a much higher price than that, and we do make profits out of it, however, a portion of our profits we donate to the LAF. Please do not be confused that we are NOT the Lance Armstrong Foundation, and we are resellers of the bracelets… Please be aware that NOT 100% of your purchase goes to Cancer research.

…

“We carry 100% authentic Livestrong Bracelets.

…

“Note: We are not the Lance Armstrong Foundation; we purchase the Livestrong bracelets from them and resell them at a higher price, just like how other hundreds of other people do. We however donate a portion of our profits to the Lance Armstrong Foundation…”

The Domain Name does not currently resolve to a website.

In October 2004, a customer notified the Complainant that LIVESTRONG bracelets were being sold on the <livestrongbracelets.net> website registered by Mr. Angeles. On January  7, 2005, the Complainant sent a cease-and-desist letter to the Respondent by both email and express mail, referring to the LIVESTRONG trademark and expressing concern that the registration and use of both the Domain Name and <livestrongbracelets.net> (the subject of another UDRP proceeding) implied a relationship with the Complainant and could constitute a violation of the US Anticybersquatting Consumer Protection Act. The letter observed that the Complainant was “not aware of any legitimate interests you may have in the domain names.” The letter also mentioned the possibility that the Complainant would seek relief through a UDRP proceeding. The Complainant suggested in the letter that the Respondent transfer the two mentioned domain names “and all other domain names including the mark LIVESTRONG that you have registered, in exchange for which LAF will reimburse you the money you paid for the registration fees.”

Mr. Angeles replied the next day with an email that shows “CSA Online Marketing” in the “From” line, along with Mr. Angeles’ email address. Mr. Angeles wrote in part:

“my apologies for what has happened. anyways, yes, due to the trademarks issues explained in the document, i will transfer the domains, and forward to LAF the ownership of the domains.”

For the next two months, the parties exchanged emails and telephone calls on the mechanics of transferring the Domain Name and other domain names incorporating the LIVESTRONG mark. Mr. Angeles reported that he could not transfer the Domain Name without cancelling the Yahoo! account he used to process orders and payments through websites associated with several domain names, and he pleaded for more time. His email dated March 4, 2005 included, for example, the following remarks:

“I AM RECEIVING NO TRAFFIC ON THE MYLIVESTRONG.COM SITE. however, i am still receiving chargebacks that i work on.

…

“i am NOT trying to delay the transfer of the domain name just to keep it for a few days more. NO. i am more than willing to transfer the ownership after given the procedure to do so… once i am given steps on how to transfer it, I WILL WORK ON IT IMMEDIATELY, AND I WILL GUARANTEE YOU THAT IT WILL BE DONE WITHIN THE NEXT 24 BUSINESS HOURS. just give me the time.”

Despite such repeated assurances by Mr. Angeles that he would transfer the Domain Name, it remains registered to the Respondent at the time of this UDRP proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant presents evidence of owning a common law trademark in the LIVESTRONG mark, as well as New York State trademark and service mark registrations and pending US federal trademark applications.

The Complainant argues that the Domain Name is confusingly similar to the LIVESTRONG mark, since it incorporates the mark and adds only the generic, descriptive, or non-distinctive word, “my.”

The Complainant emphasizes that it has not authorized the Respondent to use the LIVESTRONG mark, and that the Respondent has not claimed a right or legitimate interest in the mark. To the contrary, the Respondent has agreed from the first communications between the parties to transfer the Domain Name “due to the trademarks issues.” The Complainant points out that UDRP panels have rejected the legitimacy of using a mark in a domain name to divert customers to a competitor’s website, or to a website that offers products unrelated to those of the trademark owner.

The Complainant concludes that the Respondent’s registration and use of the LIVVESTRONG mark in the Domain Name was in bad faith. The Complainant points out that the mark was well known by the time the Respondent registered the Domain Name, and the Complainant infers that the resulting “initial interest” confusion was deliberate. The Complainant argues that using the Domain Name to attract customers to websites selling other products, some of them competing with those of the Complainant, is not a fair use of the mark but rather evidence of bad faith.

B. Respondent

The Respondent chose not to furnish a more substantive reply in this proceeding than is found in the following brief statement made in the online Response form that Mr. Angeles completed with respect to both pending UDRP proceedings:

“the domain livestrongbracelets.net HAS BEEN unlocked already since march! mylivestrong.com cannot be cancelled before because of returned orders, the host cannot be cancelled. there is no more traffic now however, and it is safe for laf to get my domains. no traffic too going to livestrongbracelets.net. take the domain names.”

The Respondent stated in correspondence with the Center on September 11, 2005 that he had “unlocked the domain” and cancelled his “yahoo store account,” “which is what the complaint wanted.”

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Name, the Complainant must demonstrate each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

As in other cases where a respondent fails to reply, or provides a minimal reply, the Panel must still satisfy itself that the Complainant here has met its overall burden of proof under paragraph 4 of the Policy, based on the documents and statements submitted and on applicable rules and principles of law (Rules, paragraph 15(a)).

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the LIVESTRONG mark. The Complainant has submitted credible and undisputed evidence that the mark has been used in commerce since December 2003, that it is registered as a trademark and service mark in the State of New York, and that it has been the subject of pending United States federal trademark applications since May 2004. See Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 (June 30, 2004) <idealeague.com> and others, and decisions cited therein, holding that the first element of the Policy applies to both registered and unregistered marks; the Policy protects the latter where there is “sufficient distinctiveness through use and promotion” to identify products or services with a party. Here, it is clear that the Complainant’s LIVESTRONG mark has quickly become well known, with more than 50 million LIVESTRONG bracelets sold by the Complainant charity named after sports celebrity Lance Armstrong.

The Panel also finds that the Domain Name is confusingly similar to the LIVESTRONG mark. It incorporates the mark in its entirety, adding only the generic and non-distinctive word “my,” which is often used as a prefix in domain names and therefore does not lessen the likelihood of confusion. See Herbalife International of America, Inc. v. myherbalife.com, WIPO Case No. D2002-0101 (April 13, 2002) <myherbalife>, and cases cited therein.

The disclaimer of affiliation with the Complainant found on the Respondent’s website to which the Domain Name formerly resolved does not avoid a finding of confusing similarity. The question under Policy paragraph 4(a) is whether the Domain Name itself, without regard to the content of an associated website, creates confusion as to the sponsorship of the domain. See, e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (January 25, 2001) <guiness.com>.

B. Rights or Legitimate Interests

It is undisputed that the Complainant has not authorized the Respondent to use its mark. The Respondent has been given several opportunities, in correspondence with the Complainant and more recently in this proceeding, to assert a right or legitimate interest in the Domain Name, and the Respondent has notably failed to do so. The Respondent agreed from the first exchange with the Complainant, on January  8, 2005, that “yes, due to the trademarks issues explained in the document, i will transfer the domains, and forward to LAF the ownership of the domains.” The Response in this proceeding offers no justification for registering and using the Domain Name incorporating the Complainant’s LIVESTRONG mark and appears to concede the result: “take the domain names.”

The Panel notes that the Respondent’s website, as quoted above, indicated that the Respondent resold the Complainant’s LIVESTRONG bracelets. The use of a domain name “in connection with a bona fide offering of goods or services” may establish a respondent’s “rights or legitimate interests” (Policy, paragraph 4(c)(i)). Several UDRP decisions address the question of whether a reseller of branded goods is making a bona fide offering that should be viewed as conferring a “legitimate interest” in a domain name incorporating the mark. These decisions were reviewed recently in Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447 (June 8, 2005) <volvo-auto-body-parts-online.com>. The Volvo panel observed that some UDRP decisions treat a reseller’s unauthorized use of a mark in a domain name as generally illegitimate, while others recognize a right to use the manufacturer’s mark to describe the reseller’s business, even in a domain name, subject to certain conditions. The latter decisions, endorsed by the Volvo panel, often cite Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001) <okidataparts.com>. The Oki Data panel concluded that the use of a manufacturer’s trademark in a dealer’s or reseller’s domain name should be regarded as being in connection with “a bona fide offering of goods or services” within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

Under the Oki Data approach, this Panel would have to conclude that the Respondent does not have a legitimate interest in using the LIVESTRONG mark in the Domain Name. The Respondent clearly fails the second Oki Data test: its website was used not only to resell the Complainant’s LIVESTRONG bracelets but also to sell a variety of other bracelets. There is a distinct danger of “bait and switch” tactics, as the Respondent trades on the goodwill associated with the Complainant’s LIVESTRONG mark to attract Internet users and then attempt to sell them other products. This does not constitute the use of a domain name incorporating another party’s trademark “in connection with a bona fide offering of goods or services.”

Thus, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy cites four non-exclusive circumstances that indicate bad faith in registering and using a domain name. The fourth is apposite here: using a domain name intentionally to attract Internet users to a site for commercial gain, by creating a likelihood of confusion with the complainant’s mark (Policy, paragraph 4(b)(iv)).

The Respondent’s website was clearly commercial. The Respondent’s intent to attract Internet users by creating a likelihood of initial confusion may be inferred from the registration and use of the LIVESTRONG mark in the Domain Name after the mark had become widely known. The Respondent itself detailed the success of the Complainant’s LIVESTRONG bracelet campaign in the text found on the website to which the Domain Name formerly resolved. The Respondent exploited the strong public interest in that campaign to attract Internet users to a site that not only resold the LIVESTRONG bracelets at a steep markup but also sold other products.

Bad faith under paragraph 4(b)(iv) of the Policy is concerned with illegitimately “attracting” Internet users to a respondent’s website for commercial gain, by creating confusion as to the website’s affiliation with a trademark owner. Site visitors may or may not decide to examine the site further and deal with its operator after seeing a disclaimer of affiliation, such as the Respondent provided on its website (assuming that site visitors read the disclaimer).

It is a fair and unrefuted inference here that the Respondent intended to attract Internet users by employing the Complainant’s mark in the Domain Name and creating initial interest confusion as to the sponsorship of the website to which the Domain Name resolved. This supports a finding of bad faith under paragraph 4(b)(iv) of the Policy. See Toyota Motor Sales, U.S.A., Inc. v. I.E. Mann d/b/a Everything Internet, National Arbitration Forum Case No. FA370902 (January 11, 2005), <autotoyotaparts.com> (respondent “commercially benefits from this diversion by selling products and services to Internet users who are searching under Complainant’s mark”); The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc/Front and Center Entertainment, WIPO Case No. D2004-0947 (January 20, 2005) <orangebowl.net> and <orangebowltickets.net> (respondent “fails to meet the test for fair use because the ORANGE BOWL mark is used in Respondent’s domain name not merely to describe, but also as an attention-getting device to attract Internet users to Respondent’s site to sell other products, and because the domain name is used to sell products that it does not describe”).

The four instances of bad faith cited in paragraph 4(b) of the Policy are expressly non-exclusive; they are listed “in particular but without limitation” as circumstances of bad faith. Other instances of bad faith are evident in the record of this proceeding, as discussed below.

As a corollary to paragraph 4(b)(iv) of the Policy, UDRP panels have held that where a domain name that is confusingly similar to the trademark of another is used to directly compete with the mark holder, the registrant is acting in bad faith. See Share Our Gifts Foundation, Inc. v. Freedom Bands Inc., Fan Bandz Inc a/k/a fanbanz, WIPO Case No. D2004-1070 (March 18, 2005) <freedombands.net> and others. That is the case here, where the Respondent used public interest in the LIVESTRONG bracelet to attract potential customers to a site that sold other kinds of bracelets.

UDRP panels have also found bad faith simply in a respondent’s registration and use of a domain name incorporating a complainant’s mark with actual or constructive knowledge of the complainant’s trademark rights. See, e.g., Toyota Motor Sales U.S.A., Inc. v. I.E. Mann d/b/a Everything Internet, National Arbitration Forum Case No. FA370902 (January 11, 2005), <autotoyotaparts.com>, and cases cited therein. Here, the Complainant’s LIVESTRONG mark was widely known by the time the Respondent registered the Domain Name, as evidenced by the sale of more than 20 million LIVESTRONG bracelets, and the Respondent’s own website discussed the popularity of the Complainant’s LIVESTRONG campaign. The Complainant displayed the mark with a “TM” symbol on its own websites, and the Respondent, a US resident, could easily have confirmed online that the Complainant had pending US trademark applications. Therefore, the Respondent’s incorporation of the entire mark in the Domain Name (and in the two domain names that are the subject of another UDRP proceeding) warrants an inference of bad faith.

Finally, the Panel considers the Respondent’s history of delaying for months, after conceding the Complainant’s right to the Domain Name and promising to transfer it, as evidence of bad faith.

The Respondent does not offer any good-faith reasons for registering and using the Domain Name that might serve to rebut the inference of bad faith on these various grounds. The Response and correspondence with the Center refer to steps taken by the Respondent toward enabling the transfer of the Domain Name, and the Response includes the remark, “take the domain names.” Nor, as discussed above, can the Respondent be deemed to have a legitimate interest in the Domain Name as a reseller of the Complainant’s LIVESTRONG bracelets, because it has used the Domain Name to sell other products as well.

There is nothing, in short, to persuade the Panel that the registration and use of the Domain Name was anything other than opportunistic and abusive conduct of a kind that the Policy was designed to correct. The Panel concludes that the Respondent registered and used the Domain Name in bad faith within the meaning of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mylivestrong.com> be transferred to the Complainant.

Dated: October 13, 2005