national arbitration forum

 

DECISION

 

Born to Ride, Inc. v. Wayne Kohl

Claim Number: FA0809001222657

 

PARTIES

Complainant is Born to Ride, Inc. (“Complainant”), represented by Gregory S. Bernabeo, of Saul Ewing LLP, Pennsylvania, USA.  Respondent is Wayne Kohl (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <borntoride.com>, registered with Godaddy.com, Inc.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 2, 2008.

 

On September 2, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <borntoride.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 September 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 30, 2008 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@borntoride.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 9, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

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 <borntoride.com> domain name is identical to Complainant’s BORN TO RIDE mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Born to Ride, Inc., has sold and otherwise provided goods and services relating to motorcyclists since 1995.  Complainant has published a magazine, sold clothing, and produced more than 650 episodes of a television show, all of which were marketed under the BORN TO RIDE mark.  Complainant has registered the BORN TO RIDE mark numerous times with the United States Patent and Trademark Office (“USPO”), including Registration Number 2,482,316 issued August 28, 2001.

 

Complainant originally registered the <borntoride.com> domain name on June 9, 1996.  Complainant then developed a corresponding website promoting its products and services under the BORN TO RIDE mark.  In January 2000, Complainant hired a web developer to assist with the maintenance and development of the website resolving from the <borntoride.com> domain name.  In or around May 2007, this web developer transferred the registration of the <borntoride.com> domain name to his own name without Complainant’s authorization.

 

Currently, the WHOIS domain name registration information identifies Respondent as “Domains by Proxy, Inc.”  The <borntoride.com> domain name is being used to redirect Internet users to Complainant’s official website that advertises Complainant’s products and services using the BORN TO RIDE mark.

 

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.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).

 

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

 

As a preliminary matter, the Panel finds that Complainant possesses rights in the BORN TO RIDE mark pursuant to Policy ¶ 4(a)(i) by virtue of its USPTO registration as well as its continued use of the mark in commerce.  See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).

 

Respondent’s <borntoride.com> domain name contains Complainant’s BORN TO RIDE mark in its entirety with minimal changes; the disputed domain name merely removes the spaces and adds the generic top-level domain (“gTLD”) “.com.”  Both of these represent functional changes that are required of all domain names, so they do not differentiate the disputed domain name in any way.  The Panel therefore easily concludes that Respondent’s <borntoride.com> domain name is identical to Complainant’s BORN TO RIDE mark pursuant to Policy ¶ 4(a)(i).  See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent lacks rights and legitimate interests in the <borntoride.com> domain name.  Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent.  Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

 

As previously mentioned, the <borntoride.com> domain name was previously registered and used by Complainant.  In 2007, Complainant’s web developer transferred the registration to his own name without Complainant’s authorization.  Currently, the WHOIS information identifies Respondent as “Domains by Proxy, Inc.”  Respondent has not responded to the Complaint, and it is unknown whether the web developer or another individual or business is the actual registrant of the <borntoride.com> domain name.  In either event, Respondent has not come forth with any evidence indicating it may be commonly known by the <borntoride.com> domain name.  On the contrary, Complainant claims that Respondent has never been known by the disputed domain name, and has never acquired any trademark rights in the BORN TO RIDE mark or any similar mark.  Consequently, based on the evidence in the record, the Panel finds that Respondent is not commonly known by the <borntoride.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Respondent’s <borntoride.com> domain name redirects Internet users to Complainant’s official website.  However, Respondent did not have Complainant’s permission to acquire the registration of the disputed domain name.  Respondent is therefore preventing Complainant from exercising control over its own website.  The Panel finds that this cannot constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See WorldPay Ltd. v. Jones, FA 1169388 (Nat. Arb. Forum May 8, 2008) (finding that the respondent was not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because the respondent used the disputed domain name to link to the complainant’s website); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).

 

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

 

Registration and Use in Bad Faith

 

Respondent is preventing Complainant from exercising control over its website and online content.  This creates a likelihood of confusion as to the source of Respondent’s <borntoride.com> domain name and Complainant’s corresponding website.  Respondent is thus misappropriating the goodwill associated with Complainant’s business, and specifically the BORN TO RIDE mark that is displayed throughout Complainant’s website.   The Panel therefore determines that Respondent’s registration and use of the <borntoride.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the respondent registered the domain name <statefarmnews.com> in bad faith because the respondent intended to use the complainant’s marks to attract the public to the website without permission from the complainant).

 

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

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  October 21, 2008

 

 

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