Inland
Empire 66ers Baseball Club of San Bernadino, Inc. v.
Claim Number: FA0812001238043
Complainant is Inland
Empire 66ers Baseball Club of San Bernadino, Inc. (“Complainant”),
represented by Daniel M. Cislo, of Cislo & Thomas LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <66ers.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 15, 2008.
On December 11, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <66ers.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 December 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 6, 2009 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@66ers.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <66ers.com> domain name is confusingly similar to Complainant’s SIXTY SIXERS mark.
2. Respondent does not have any rights or legitimate interests in the <66ers.com> domain name.
3. Respondent registered and used the <66ers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant,
Respondent registered the disputed <66ers.com> domain name on October 5, 2003. The disputed domain name resolves to a website that displays third-party advertisements and links, some of which lead to Complainant’s direct competitors.
Respondent has been the respondent in numerous other UDRP
disputes, wherein the disputed domain names in those cases were transferred to
the respective complainants. See, e.g., Enter. Rent-A-Car Co. v. Whois Serv., FA 992206 (Nat. Arb. Forum June
29, 2007); see also C.R. Bard, Inc. &
BCR, Inc. v.
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.
Complainant has submitted evidence of its rights in the SIXTY SIXERS mark through the registration of the mark with the USPTO. The Panel therefore finds that Complainant has rights in the mark under Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
Complainant has alleged that it has used its mark since September 1, 2002 in connection with its provision of athletic and sportswear clothing. This date also appears on Complainant’s trademark registration with the USPTO as the first date of use in commerce. Complainant has submitted evidence of the type of goods that it offers, and examples of its revenue and advertising amounts. Therefore, the Panel finds that Complainant has demonstrated sufficient secondary meaning in the mark to obtain common law rights dating back to September 1, 2002 pursuant to Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).
Respondent’s <66ers.com> domain name contains
Complainant’s SIXTY SIXERS mark with the following alterations: (1) reducing
the “sixty six” element to its numerical equivalent “66;” and (2) adding the
generic top-level domain “.com.” The
Panel notes that the addition of “.com” adds no relevant distinction. See Nev. State Bank v. Modern
Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003)
(“It has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.”). The
remaining element for analysis is the variation and reduction of the “sixty
six” element of the mark to its numerical equivalent. The Panel begins by noting that this
alteration creates no phonetical or substantive difference, and thus no
meaningful alteration has been created. See, e.g., YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the
domain name <yawho.com> is confusingly similar to the complainant’s YAHOO
mark); see also
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed 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 may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in 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); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Respondent is listed in the WHOIS domain name registration information as “Belize Domain WHOIS Service Lt,” and Complainant has expressly denied any affiliation between the parties or authorization for Respondent to use Complainant’s mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s disputed domain name resolves to a website that
features third-party links and advertising.
Some of these links lead to Complainant’s direct competitors. The Panel therefore finds that Respondent—presumably
conducting this activity in the pursuit of referral fees—has failed to create 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8,
2007) (concluding that the operation of a pay-per-click website at a
confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate
noncommercial or fair use, regardless of whether or not the links resolve to
competing or unrelated websites or if the respondent is itself commercially
profiting from the click-through fees); see
also ALPITOUR S.p.A. v. Albloushi,
FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s
contention of rights and legitimate interests in the <bravoclub.com>
domain name because the respondent was merely using the domain name to operate
a website containing links to various competing commercial websites, which the
panel did not find to be a use 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)).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent has been the respondent in numerous other UDRP
disputes, wherein the disputed domain names in those cases were transferred to
the respective complainants. See, e.g., Enter. Rent-A-Car Co. v. Whois Serv., FA 992206 (Nat. Arb. Forum June
29, 2007); see also C.R. Bard, Inc. &
BCR, Inc. v.
Respondent’s disputed domain name resolves to a website that
features click-through advertising for Complainant’s competitors. The Panel finds that this likely disrupts
Complainant’s business, and that therefore Respondent registered and is using
the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See
David
Respondent has also created a likelihood of confusion as to
Complainant’s source or endorsement of the disputed domain name by attracting
Internet users through the confusingly similar disputed domain name for
commercial gain. The Panel therefore
finds that Respondent has engaged in bad faith registration and use under
Policy ¶ 4(b)(iv).
See Bank of Am. Fork v. Shen, FA
699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s
previous use of the <bankofamericanfork.com> domain name to maintain a
web directory was evidence of bad faith because the respondent presumably
commercially benefited by receiving click-through fees for diverting Internet
users to third-party websites); see also
Williams-Sonoma, Inc. v. Fees, FA
937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly
similar domain name to display links to various third-party websites
demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <66ers.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 23, 2009
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