National Outdoors League, Inc. v. Don Stanley
Claim Number: FA1906001846406
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationaloutdoorsleague.com>, registered with Namecheap, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 4, 2019; the Forum received payment on June 4, 2019.
On June 5, 2019, Namecheap, Inc. confirmed by e-mail to the Forum that the <nationaloutdoorsleague.com> domain name is registered with Namecheap, Inc. and that Respondent is the current registrant of the name. Namecheap, Inc. has verified that Respondent is bound by the Namecheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nationaloutdoorsleague.com. Also on June 11, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 5, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and operates a retail store for outdoor activities. Complainant has rights in its NATIONAL OUTDOOR LEAGUE mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,218,173, registered Jun. 6, 2017). Respondent’s <nationaloutdoorsleague.com> domain name is identical to Complainant’s mark.
Respondent has no rights or legitimate interests in the <nationaloutdoorsleague.com> domain name as Respondent is not associated with Complainant’s mark, and therefore lacks rights in the disputed domain name. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is using the domain name to offer pay-per-click hyperlinks. Complainant also previously owned the disputed domain name. Finally, Respondent has listed the disputed domain name for sale.
Respondent registered and uses the <nationaloutdoorsleague.com> domain name in bad faith. Respondent has the disputed domain name resolve to a parked webpage offering hyperlinks. Respondent is attempting to sell the disputed domain name for excess of out-of-pocket costs. Furthermore Complainant previously owned the disputed domain name, but inadvertently allowed the domain name registration to lapse.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is National Outdoors League, Inc. (“Complainant”), of Lebanon, Tennessee, USA. Complainant is the owner of the domestic registration for the mark NATIONAL OUTDOORS LEAGUE, having continuously used the mark since at least 2016, in connection with Complainant’s provision of outdoor entertainment and products.
Respondent is Don Stanley (“Respondent”), of New York, New York, USA. Respondent’s registrar’s address is unlisted. The Panel notes that <nationaloutdoorsleague.com> was originally registered on or about September 27, 2016, and re-registered by the Respondent or about October 30, 2018.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in its NATIONAL OUTDOOR LEAGUE mark through registration with the USPTO (e.g. Reg. No. 5,218,173, registered Jun. 6, 2017). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel here finds that the Complainant has rights in the NATIONAL OUTDOOR LEAGUE mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <nationaloutdoorsleague.com> domain name is identical to Complainant’s NATIONAL OUTDOOR LEAGUE mark. While Complainant does not specifically argue why the disputed domain name is identical to the mark, the Panel notes the sole change is the addition of the “.com” generic top-level domain (“gTLD”). A disputed domain name can be found to be identical when respondent merely adds a gTLD under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). The Panel here finds that Respondent’s <nationaloutdoorsleague.com> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <nationaloutdoorsleague.com> domain name as Respondent is not associated with the NATIONAL OUTDOOR LEAGUE mark or the disputed domain name that fully incorporates the mark. Lack of authorization to use a complainant’s mark may support a finding that a respondent is not commonly known by the mark under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). Here, Complainant point to its rights in the NATIONAL OUTDOOR LEAGUE mark, and evidence that Respondent obtained the disputed domain name when Complainant let its registration lapse. The Panel here finds Respondent has no rights or legitimate interests in the <nationaloutdoorsleague.com> domain name as Respondent is not associated with the NATIONAL OUTDOOR LEAGUE mark or the disputed domain name that fully incorporates the mark under Policy ¶ 4(c)(ii).
Complainant further argues Respondent has no rights or legitimate interests in the <nationaloutdoorsleague.com> domain name as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent is using the domain name to offer pay-per-click hyperlinks. Use of a disputed domain name to offer pay-per-click hyperlinks is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provided screenshots of the resolving webpage for the <nationaloutdoorsleague.com> domain name, showing a link for “Baseball Equipment”, as well as a search bar to find other advertisements. The Panel here finds Respondent has no rights or legitimate interests in the <nationaloutdoorsleague.com> domain name as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues Respondent has no rights or legitimate interests in the <nationaloutdoorsleague.com> domain name as Complainant previously owned the <nationaloutdoorsleague.com> domain name but lost it when the registration lapsed. When a response is lacking, a respondent can be found to lack rights or legitimate interests in the disputed domain name when Complainant was the first to register it under Policy ¶ 4(a)(ii). See Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum Sept. 1, 2016) (“[The disputed domain name was] registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date… As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Here, Complainant states that the domain name was registered by Complainant on September 27, 2016 as its business website, followed by the state registration of its domain name on December 8, 2016, but Complainant inadvertently lost the domain name due to internal issues with a third-party contractor associated with Complainant. The Panel here finds that Respondent has no rights or legitimate interests in the <nationaloutdoorsleague.com> domain name under Policy ¶ 4(a)(ii).
Complainant also argues Respondent has no rights or legitimate interests in the <nationaloutdoorsleague.com> domain name as Respondent is attempting to sell the domain name. A lack of rights or legitimate interests can be found when respondent offers a disputed domain name for sale either to the general public or to the complainant under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, Complainant provides screenshots of the resolving webpage for the <nationaloutdoorsleague.com> domain name, showing that the domain is for sale, as well as the price Respondent is seeking in the amount of $9,480.00. The Panel here finds Respondent has no rights or legitimate interests in the <nationaloutdoorsleague.com> domain name under Policy ¶ 4(a)(ii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues Respondent’s <nationaloutdoorsleague.com> domain name was registered and is being used in bad faith, as Respondent is offering to sell the disputed domain name for more than out-of-pocket expenses to the general public after Complainant made an offer. Raising a disputed domain name’s sales price, after complainant makes an offer is evidence of bad faith under Policy ¶ 4(b)(i). See Bear River Mutual Insurance Company v. Dzone Inc., FA1311001528522 (Forum Dec. 11, 2013) (concluding that the respondent’s offer to sell the disputed domain name to the general public and to the complainant in the form of counter-offers demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i)). Additionally, listing a disputed domain name for sale for an excessive price can be evidence of bad faith under Policy ¶ 4(b)(i). See Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”). Here, Complainant states that its representative contacted Respondent with an offer to purchase the disputed domain name, but Respondent declined the offer and countered-offered in excess of out of pocket cost. Further, Complainant provides resolving screenshots showing Respondent is currently seeking $9488.00 for the disputed domain name. The Panel here finds Respondent’s <nationaloutdoorsleague.com> domain name was registered and is being used in bad faith, as Respondent is offering to sell the disputed domain name for more than out-of-pocket expenses to the general public after Complainant made an offer under Policy ¶ 4(b)(i).
Complainant argues Respondent’s <nationaloutdoorsleague.com> domain name was registered and is being used in bad faith, as Respondent has the disputed domain name resolve to a parked webpage offering hyperlinks for commercial gain. Registration and use of a disputed domain name to offer hyperlinks competing with complainant’s business can be evidence of bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Here, Complainant provided screenshots of the resolving webpage for the<nationaloutdoorsleague.com> domain name, showing a link for “Baseball Equipment”, as well as a search bar to find other advertisements. The Panel here finds Respondent’s <nationaloutdoorsleague.com> domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues Respondent’s <nationaloutdoorsleague.com> domain name was registered and is being used in bad faith, as Complainant used to own the disputed domain name as its main website, but the registration lapsed due to a third party contractor. Bad faith can be found when respondent takes advantage of complainant’s inability or failure to re-register the disputed domain name under Policy ¶ 4(a)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (inferring that the respondent had knowledge that the <tercent.com> domain name previously belonged to the complainant when the respondent registered said domain name the very same day the complainant’s registration lapsed). Here, Complainant states that the domain name was registered by Complainant on September 27, 2016 as its business website, but later accidentally lost due to internal issues with a third-party contractor. The Panel here finds that Respondent’s <nationaloutdoorsleague.com> domain name was registered and is being used in bad faith, as Complainant used to own the disputed domain name as its main website under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <nationaloutdoorsleague.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 19, 2019
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