Wilson Sporting Goods Co. v. wang shi guang
Claim Number: FA1202001430578
Complainant is Wilson Sporting Goods Co. (“Complainant”), represented by Terence P. O'Brien of Wilson Sporting Goods Co., Illinois, USA. Respondent is wang shi guang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wilsontennissale.com>, registered with Jiangsu Bangning Science & Technology Co. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2012; the National Arbitration Forum received payment on February 21, 2012. The Complaint was submitted in both Chinese and English.
On February 26, 2012, Jiangsu Bangning Science & Technology Co. Ltd confirmed by e-mail to the National Arbitration Forum that the <wilsontennissale.com> domain name is registered with Jiangsu Bangning Science & Technology Co. Ltd and that Respondent is the current registrant of the names. Jiangsu Bangning Science & Technology Co. Ltd has verified that Respondent is bound by the Jiangsu Bangning Science & Technology Co. Ltd 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 February 28, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 19, 2012 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@wilsontennissale.com. Also on February 28, 2012, the Chinese language 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 March 28, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant states that the disputed domain name is confusingly similar to its BENIHANA mark.
2. Complainant claims that Respondent does not have rights or legitimate interests in the disputed domain name.
3. Complainant claims that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Wilson Sporting Goods Co., is engaged in the business of manufacturing and distributing sporting goods. Complainant holds multiple trademark registrations for its WILSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 788,107 registered April 13, 1965).
Complainant states that the domain name at issue resolves to a website that attempts to pass itself off as Complainant in order to sell counterfeit versions of Complainant’s authentic products and other tennis brands. Complainant asserts that Respondent registered and uses the disputed domain attract and confuse consumers for its own profit and to disrupt Complainant’s business.
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(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.”).
Complainant submits evidence that it holds several trademark registrations for its WILSON mark with the USPTO (e.g. Reg. No. 788,107 registered April 13, 1965), secureing its rights to the WILSON mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Further, Complainant is not required to register its mark in the country wherein Respondent operates. See 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); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant has presented a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), shifting the burden to Respondent to show it does have rights or legitimate interests in the domain name at issue. See 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Complainant contends that it has not given Respondent license to use the mark in any way. The WHOIS information identifies the domain name registrant as “wang shi guang” and there is no evidence provided to support a finding that Respondent is commonly known by the disputed domain name, Respondent has no legitimate rights or interests in the domain name under Policy ¶ 4(c)(ii). 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 Oakley, Inc. v. Watson, D2000-1658 (WIPO May 3, 2001) (“It is clear that the value in the Oakley name has been created by the commercial use and registrations of the Complainant and it is also clear . . . that Respondent is taking advantage of the value created by the Complainant.”).
It appears that Respondent is not using the disputed domain name in the context of a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant alleges that Respondent uses the WILSON mark to “obtain a commercial advantage by misleadingly diverting consumers to its website,” and that it sells counterfeit sporting goods under the WILSON mark. Further, the Respondent attempts to pass itself off as an affiliate of Complainant’s business by using the WILSON mark and a website that copies Complainant’s website to sell similar goods to what Complainant sells. In Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007), the panel found no rights and legitimate interests to exist in the disputed domain name when the respondent made sales from counterfeit versions of the complainant’s products. The panel in Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008), determined that advertising unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Respondent’s use of the disputed domain name to sell counterfeit goods, as well as to pass itself off as an authorized dealer of Complainant’s product, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent’s use of the <wilsontennissale.com> domain name causes a disruption to Complainant’s business because Respondent sells products under the WILSON name without authorization. In Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008), and Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), the panel concluded that the complainants’ businesses suffered disruption by the respondents’ use of the domain name to sell counterfeit products, and such activity was held evidence of bad faith registration and use of the domain names. Selling counterfeit products disrupts Complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant argues that Respondent registered the <wilsontennissale.com> domain name in order to take advantage of the reputation associated with the WILSON mark to attract consumers to its website in order to sell products. Consumers seeking Complainant’s products are misdirected to Respondent’s web page where counterfeit items are sold under the WILSON name, leading consumers to believe that the items are indeed Complainant’s products. By registering a domain name that is confusingly similar to Complainant’s mark in order to sell products similar to Complainant’s by misdirecting consumers to its website, Respondent’s use of the domain name constitutes bad faith under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Complainant argues that Respondent attempts to pass itself off as affiliated with Complainant’s business because it uses the WILSON mark and sells products purporting to be Complainant’s products. The screenshots provided by Complainant reveal a resolving website that resembles Complainant’s own website in design. Respondent’s use of the WILSON mark and design to set up a web page attempting to pass itself off as Complainant further indicates bad faith registration and use under Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wilsontennissale.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 13, 2012
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