The Finish Line, Inc. v. Luca Mueller
Claim Number: FA1011001359382
Complainant is The Finish Line, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Luca Mueller (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finishlineoutlet.com>, registered with ABOUT DOMAIN DOT COM SOLUTIONS PVT. LTD. d/b/a WWW.ABOUTDOMAINSOLUTIONS.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 November 18, 2010; the National Arbitration Forum received payment on November 19, 2010.
On November 30, 2010, ABOUT DOMAIN DOT COM SOLUTIONS PVT. LTD. d/b/a WWW.ABOUTDOMAINSOLUTIONS.COM confirmed by e-mail to the National Arbitration Forum that the <finishlineoutlet.com> domain name is registered with ABOUT DOMAIN DOT COM SOLUTIONS PVT. LTD. d/b/a WWW.ABOUTDOMAINSOLUTIONS.COM and that Respondent is the current registrant of the names. ABOUT DOMAIN DOT COM SOLUTIONS PVT. LTD. d/b/a WWW.ABOUTDOMAINSOLUTIONS.COM has verified that Respondent is bound by the ABOUT DOMAIN DOT COM SOLUTIONS PVT. LTD. d/b/a WWW.ABOUTDOMAINSOLUTIONS.COM 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 December 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2010 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@finishlineoutlet.com. Also on December 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2010, 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" 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 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 <finishlineoutlet.com> domain name is confusingly similar to Complainant’s FINISH LINE mark.
2. Respondent does not have any rights or legitimate interests in the <finishlineoutlet.com> domain name.
3. Respondent registered and used the <finishlineoutlet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Finish Line, Inc., owns the exclusive rights to the FINISH LINE mark which it uses in connection with its athletic footwear and apparel retail business. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its FINISH LINE mark (e.g., Reg. No. 1960883 issued March 5, 1996).
Respondent, Luca Mueller, registered the <finishlineoutlet.com> domain name on January 15, 2008. The disputed domain name resolves to a pay-per-click website, displaying some links which compete with Complainant.
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.
Complainant contends it has established rights in the FINISH LINE mark. The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark, irrespective of a respondent’s country of operation. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant holds multiple trademark registrations with the USPTO for its FINISH LINE mark (e.g., Reg. No. 1960883 issued March 5, 1996). Therefore, the Panel finds that Complainant has established rights in the FINISH LINE mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <finishlineoutlet.com> domain name is confusingly similar to Complainant’s FINISH LINE mark. The disputed domain name contains Complainant’s entire FINISH LINE mark, removes the space in between the two words, adds the generic term “outlet,” and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the removal of a space from a complainant’s mark and the addition of a gTLD do not sufficiently distinguish a disputed domain from said mark because these are both required elements of a domain name. Earlier panels have also found that the addition of a generic term to a mark may render said domain confusingly similar to the complainant’s famous mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Accordingly, the Panel finds Respondent’s <finishlineoutlet.com> domain name is confusingly similar to Complainant’s FINISH LINE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the <finishlineoutlet.com> domain name. Previous panels have found that a complainant must first make a prima facie case and then the burden of proof shifts to the respondent to show that they do have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Respondent has made a prima facie case. Due to Respondent’s lack of response, the Panel may infer that Respondent does not have rights or legitimate interests in the <finishlineoutlet.com> domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not authorized to use the FINISH LINE mark. The WHOIS information identifies the domain name registrant as “Luca Mueller.” There is no evidence in the record to indicate that Respondent has been commonly known by the <finishlineoutlet.com> domain name. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent uses the disputed domain name to display click-through links, some of which compete with Complainant’s business, and which Respondent likely profits from. The Panel finds this does not 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 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 Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges Respondent’s use of the <finishlineoutlet.com> domain name is part of a pattern of bad faith use and registration. Respondent has been a respondent in multiple UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants. See Hidroservice Engenharia LTDA v. Luca Mueller – NA, FA 1282351 (Nat. Arb. Forum Oct. 12, 2009); see also ITV plc v. NA, Luca Mueller, D2010-0253 (WIPO May 6, 2010). The Panel determines this conduct to be evidence of a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).
Complainant alleges that Respondent’s use of the <finishlineoutlet.com> domain name constitutes a disruption of Complainant’s business. The disputed domain name resolves to a website displaying third-party, commercial links, some of which are in direct competition with Complainant. The Panel concludes that this constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent is attempting to capitalize on the creation of confusion caused by the use of the <finishlineoutlet.com> domain name. Internet users likely reach Respondent’s website while looking for the official website of Complainant and are apt to become confused as to any relation between the two. Respondent likely profits from this confusion as Internet users click-through the links displayed on the disputed domain name. The Panel finds this to be bad faith registration and use on the part of Respondent, pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds 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 <finishlineoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 30, 2010
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