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Lance Armstrong Foundation v. Chris Angeles [2005] GENDND 1791 (13 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lance Armstrong Foundation v. Chris Angeles

Case No. D2005-0888

1. The Parties

The Complainant is the 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 Chris Angeles, West Covina, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <livestrongbracelets.net> and <talk-livestrong.com> (the “Domain Names”) are registered with Schlund+Partner.

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 Schlund+Partner a request for registrar verification in connection with the Domain Names. On August 22, 2005, Schlund+Partner 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 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 14, 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 Names 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 Chris Angeles registered <livestrongbracelets.net> on October 10, 2004, and <talk-livestrong.com> on November 12, 2004. CSA Marketing (listed at the same address as Mr. Angeles) registered a third domain name incorporating the LIVESTRONG mark, <mylivestrong.com>, in December 2005. That domain name is the subject of another pending UDRP proceeding, Lance Armstrong Foundation v. CSA Marketing, WIPO Case No. D2005-0886, in which Mr. Angeles represents CSA Marketing. 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 <livestrongbracelets.net> resolved to a website advertising yellow “Livestrong” and pink “breast cancer” bracelets (for $4.95 apiece), as well as wristbands inscribed “USA”, “Unite to Fight”, “Hope, Faith, Love, Life”, “Jesus Loves Me”, “Tsunami Relief”, “God Bless America”, and other slogans. The website also advertised purely decorative bracelets. “CSA Premier Products (CA, United States)” was shown as the source of “goods and services” provided through the website, and some of the items were pictured with “CSA Online Marketing” displayed across the image. The text of the website read in part as follows (emphasis in original):

“The livestrong bracelets that were once an item to support cancer research is now known as a fashion trend. As of date, there are already more than 20 million of these sold worldwide, which supports the research of Cancer. You may have noticed them everywhere being worn by senior citizens, adults, and children.

“The Livestrong bands are so in demand, that all sporting retail stores are out of stock and on backorder. Get them now while we still have them!

…

“We only sell authentic Livestrong Bracelets, that come from Nike. They are 100% authentic and not the fake ones.

Please be aware that NOT 100% of your purchase will go to the Lance Armstrong Foundation. If your main purpose of purchase is to support the research of cancer, please be aware that we are resellers that make profits.

…

“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…

…

“We have purchased the Livestrong bands directly from Nike manufacturer, so every purchase made will help funds towards the Lance Armstrong Cancer Research.

…

“We regularly donate a percent of our profits to the Lance Armstrong Foundation for Cancer research and Susan G. Komen Breast Cancer Foundation.”

August 2005 screenshots, by contrast, show the Domain Name <livestrongbracelets.net> resolving to a website headed “yellowrubber.net” (and displaying a copyright notice for “YellowRubber.NET”) which advertised similar products. These included the “Livestrong Yellow” bracelet (for $3.00 apiece) as well as more than 40 other wristbands. Some of these were purely decorative, but most were inscribed with slogans or images used by various nonprofit or commercial organizations. In addition to bracelets found on the earlier version of the website as described above, these included bracelets inscribed, for example, with “Say No to Drugs”, “Support Our Troops”, “I [heart symbol] New York”, and the names of characters from the popular Star Wars films, such as “Jedi Knight”.

As shown in screenshots submitted with the Complaint, the Domain Name <talk-livestrong.com> resolved, at the time the Complaint was prepared, to yet another website advertising “the Livestrong bracelet” and “some other silicone bracelets that are similar to the livestrong bracelets”, for $5.95 apiece. The accompanying text, which included the Complainant “Lance Armstrong Foundation” as a “reference”, read in part as follows:

“The Livestrong Bracelets Start a New Trend… over 20 million sold!! That’s already 6% of the U.S. Population!

“Nowadays, the Livestrong bracelet has been more of a fashion trend than as a symbol for cancer awareness and fund raising… The idea of the Lance Armstrong Foundation was to raise funds in order to increase the budget for Cancer Research. They sell it for $1.00 each at www.laf.org… The LAF averages 200,000 sales of these bracelets a day. Due to this high demand, they have a backorder of 3-4 weeks, in which the customer has to wait this long to receive it… Many people now make a business out of these bracelets, which are so high in demand… These bracelets that were supposed to raise funds for cancer research are now being diverted to sellers that make a huge amount of profit on them… One thing to consider is that the sellers purchases these bracelets too from straight from the LAF… Therefore, in EACH sale of a livestrong bracelet, a default donation of $1.00 is always donated to the LAF, no matter how much it costs.”

The Domain Name <talk-livestrong.com> currently resolves to a website headed “custom bracelets”, with a copyright notice by “CUSTOMBRACELETS.NET”. It does not offer LIVESTRONG bracelets for sale. Instead, this website advertises that organizations can design their own promotional bracelets and order quantities of them through the website.

Approximately two weeks after the Respondent registered the Domain Names in October 2004, a customer notified the Complainant that LIVESTRONG bracelets were being sold on the <livestrongbracelets.net> website for $9.95 apiece. 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 the Domain Name <livestrongbracelets.net> and another domain name that is the subject of a separate UDRP proceeding, <mylivestrong.com>, 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 [the Respondent] 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”.

The Responded replied by email the next day. Along with the Respondent’s email address, the email displayed “CSA Online Marketing” in the “From” line, a name that also appeared on some of the web pages connected to <livestrongbracelets.net>. The Respondent 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 <livestrongbracelets.net> and other domain names incorporating the LIVESTRONG mark. In the course of one of the telephone conversations, the Respondent said that he also owned the Domain Name <talk-livestrong.com> and would transfer that as well to the Complainant.

Despite repeated assurances by the Respondent that he would transfer the Domain Names, they remain registered to the Respondent at the time of this UDRP proceeding.

The Response indicates, without contradiction, that the Respondent “unlocked” the Domain Name <livestrongbracelets.net> in March 2005, but this action was evidently insufficient to effect a transfer.

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 Names are confusingly similar to the LIVESTRONG mark, since they incorporate the mark and add merely descriptive or non-distinctive words.

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 Names “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 LIVESTRONG mark in the Domain Names was in bad faith. The Complainant points out that the mark was well known by the time the Respondent registered the Domain Names, and the Complainant infers that the resulting “initial interest” confusion was deliberate. The Complainant argues that using the Domain Names 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 Names, the Complainant must demonstrate each of the following:

(i) the Domain Names are 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 Names; and

(iii) the Domain Names have been registered and are 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 Names are confusingly similar to the LIVESTRONG mark. They incorporate the mark in its entirety, adding descriptive or non-distinctive words that a prospective customer might reasonably expect to see associated with a website operated by the Complainant - “bracelets” and “talk”, respectively. The Complainant sells LIVESTRONG bracelets and provides information and a forum for cancer patients and survivors. Thus, these additional words do not lessen the likelihood of confusion with the Complainant. See Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020 (March 18, 2005) <microsoftcustomerservice.com> (“the addition of such relevant descriptive words reinforces rather than detracts from the conclusion that the Domain Name confusingly refers to the business of Complainant and would likely cause at least some customers to assume that the Domain Name is associated with Complainant”); 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> (the “addition of ‘tickets’ is not sufficient to avoid confusion since it is a generic or merely descriptive term for the goods offered by Complainant under the ORANGE BOWL mark”).

The Respondent’s disclaimer of affiliation with the Complainant, express or implied on some of the web pages to which the Domain Names resolved, does not avoid a finding of confusing similarity on this element. The question under Policy paragraph 4(a)(i) is whether the Domain Names themselves, without regard to the content of an associated website, create 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 Names, 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 Names incorporating the Complainant’s LIVESTRONG mark and appears to concede the result: “take the domain names.”

The Panel notes that the Respondent’s websites, as quoted above, indicate 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 Names. The Respondent clearly fails the second Oki Data test: his websites have been used not only to resell the Complainant’s LIVESTRONG bracelets but also to sell a variety of other bracelets and even custom bracelet design and manufacturing services. 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 and services. 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 Names.

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 websites are clearly commercial. His intent to attract Internet users by creating a likelihood of initial confusion may be inferred from his registration and use of the LIVESTRONG mark in the Domain Names after the mark had become widely known. The Respondent himself detailed the success of the Complainant’s LIVESTRONG bracelet campaign in the text found on earlier versions of his websites. The Respondent exploited the strong public interest in that campaign to attract Internet users to sites that not only resold the LIVESTRONG bracelets at a steep markup but also sold other products. The statement on the home page of the website to which the Domain Name <livestrongbracelet.net> currently resolves is revealing: “We carry over 40 different types of silicone bracelets, just like the Livestrong bracelets that have started them all!”

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 some of his web pages (assuming that visitors find and 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 Names and creating initial interest confusion as to the sponsorship of the websites to which the Domain Names resolve. This constitutes 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 sites that sold more than 40 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 Names, as evidenced by the sale of more than 20 million LIVESTRONG bracelets, and the Respondent’s own websites 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 Names (and in a third domain name that is 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 Names and promising to transfer them, as evidence of bad faith.

The Respondent does not offer any good-faith reasons for registering and using the Domain Names that might serve to rebut the inference of bad faith on these various grounds. The Response merely recounts that the Respondent took one enabling step toward transferring one of the Domain Names (“unlocking” it with the registrar), and this statement concludes with the concession, “take the domain names”. Nor, as discussed above, can the Respondent be deemed to have a legitimate interest in the Domain Names as a reseller of the Complainant’s LIVESTRONG bracelets, because he has used the Domain Names to sell many other products and services as well.

There is nothing, in short, to persuade the Panel that the registration and use of the Domain Names 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 Names 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 names <livestrongbracelets.net> and <talk-livestrong.com> be transferred to the Complainant.

Dated: October 13, 2005