Wilson Sporting Goods Co. v. ago go
Claim Number: FA1202001430588
Complainant is Wilson Sporting Goods Co. (“Complainant”), represented by Terence P. O'Brien of Wilson Sporting Goods co., Illinois, USA. Respondent is ago go (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapwilsontennisrackets.com>, registered with Xin Net Technology Corporation.
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.
Bruce E. Meyerson 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 21, 2012, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <cheapwilsontennisrackets.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 27, 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@cheapwilsontennisrackets.com. Also on February 27, 2012, the Chinese language 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 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 Bruce E. Meyerson 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
Complainant alleges:
1. Complainant owns rights in its WILSON mark under Policy ¶ 4(a)(i).
2. Respondent’s <cheapwilsontennisrackets.com> domain name is identical or confusingly similar to Complainant’s WILSON mark under Policy ¶ 4(a)(i).
3. Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <cheapwilsontennisrackets.com> domain name under Policy ¶ 4(c)(iii).
4. Respondent also lacks rights and legitimate interests in the disputed domain name because Respondent is passing itself off as Complainant.
5. Respondent’s registration and use of the <cheapwilsontennisrackets.com> domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii).
6. Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant’s affiliation with the <cheapwilsontennisrackets.com> domain name under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds a registered trademark for the WILSON mark with the United States Patent and Trademark Office. Respondent did not submit a Response in this proceeding.
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.
(4) 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.”).
In support of its claim of rights in the WILSON mark, Complainant provides the Panel with evidence of its trademark registrations with the USPTO for the WILSON mark (e.g., Reg. No. 788,107 registered April 13, 1965). Complainant claims uses its WILSON mark in connection with sporting goods, specifically tennis racquets. Although Respondent resides or operates in China, the Panel concludes that Complainant owns rights in the WILSON mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also 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)); 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 argues that Respondent’s <cheapwilsontennisrackets.com> domain name is identical or confusingly similar to Complainant’s WILSON mark because the disputed domain name contains the entire WILSON mark and includes the generic term “cheap,” the descriptive terms “tennis” and “rackets,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic or a descriptive term does not sufficiently differentiate a disputed domain name from a complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
The Panel also determines that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis because top-level domains are required in any domain name. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Accordingly, the Panel holds that Respondent’s <cheapwilsontennisrackets.com> domain name is confusingly similar to Complainant’s WILSON mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant does not expressly contend that Respondent is not commonly known by the <cheapwilsontennisrackets.com> domain name. However, the Complainant does assert that Respondent is not authorized to use Complainant’s WILSON mark and that Respondent is not an authorized dealer of Complainant’s products. The WHOIS information lists “ago go” as the registrant of the disputed domain name and that Respondent did not present any allegations that it is commonly known by the disputed domain name. In light of the evidence in the record and the lack of arguments from Respondent, the Panel determines that Respondent is not commonly known by the <cheapwilsontennisrackets.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant does claim that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <cheapwilsontennisrackets.com> domain name because Respondent uses the disputed domain name to sell counterfeit versions of Complainant and Complainant’s competitors’ racquets. Complainant contends that Respondent commercially benefits from the sale of the counterfeit racquets. Therefore, the Panel agrees with Complainant and finds that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <cheapwilsontennisrackets.com> domain name. See Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011) (“Respondent’s sale of counterfeit versions of Complainant’s merchandise via the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.”); see also Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that a respondent’s attempt to use a disputed domain name to sell counterfeit goods was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s registration and use of the <cheapwilsontennisrackets.com> domain name for the purpose of selling counterfeit versions of Complainant’s products disrupts Complainant’s business. The Panel infers that Internet users attempting to purchase Complainant’s products on the Internet may instead purchase Respondent’s counterfeit products, thus disrupting Complainant’s business. Based on this inference, the Panel finds that Respondent registered and uses the <cheapwilsontennisrackets.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”); see also Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that the respondent’s disputed domain name disrupted the complainant’s business and was evidence of bad faith registration and use where Internet users looking for the complainant’s website may instead find respondent’s website and purchase counterfeit goods on the disputed domain name).
Complainant further alleges that Respondent is attempting to create confusion as to Complainant’s affiliation with the disputed domain name in order to commercially benefit from Internet users that believe they are purchasing Complainant’s actual products. The Panel notes that Respondent’s registration of the confusingly similar <cheapwilsontennisrackets.com> domain name and the sale of counterfeit goods appear to indicate that Respondent is attempting to create this confusion. Consequently, the Panel determines that Respondent registered and uses the <cheapwilsontennisrackets.com> domain name in bad faith under Policy ¶ 4(b)(iv). See CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding bad faith registration and use of the domain name under Policy ¶ 4(b)(iv) where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services); see also C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent registered and uses the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood on confusion).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapwilsontennisrackets.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 4, 2012
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