Bass Pro Intellectual Property, LLC v. Katherine Stanley
Claim Number: FA1203001433158
Complainant is Bass Pro Intellectual Property, LLC (“Complainant”), represented by Laura C. Gustafson of Pillsbury Winthrop Shaw Pittman, LLP, California, USA. Respondent is Katherine Stanley (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <basspro.xxx>, registered with GoDaddy.com, LLC.
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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2012; the National Arbitration Forum received payment on March 6, 2012.
On March 7, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <basspro.xxx> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 7, 2012, the National Arbitration Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@basspro.xxx. Also on March 7, 2012, the 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.
A timely Response was received and determined to be complete on March 27, 2012.
On April 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman 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.
Complainant requests that the disputed domain name <basspro.xxx> be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it is a well-known, premier sports equipment and outdoor sports and recreation retailer with retail stores across America and Canada, serving over 100 million customers a year. Complainant, through its predecessors and licensees, has operated retail locations since at least as early as 1972. Complainant operates over 50 retail stores in 28 states throughout the United States and in Canada. Complainant is renowned for its large selection of hunting, fishing, sporting, and outdoor gear.
Complainant relies on its rights in the trademarks and service marks BASS PRO and BASS PRO SHOPS acquired through the U.S. trademark registrations listed below and rights at common law acquired through long-established use in trade.
Complainant claims to have used the BASS PRO and BASS PRO SHOPS names and marks since at least as early as 1972. Complainant claims to have spent substantial sums each year promoting the goods offered and services rendered under the Complainant’s BASS PRO and BASS PRO SHOPS and has consequently acquired extensive goodwill in the marks.
Complainant submits that since the year 1996, it has continuously maintained and operated a website to which its domain name <basspro.com> resolves.
Complainant submits that its BASS PRO and other below-listed trademarks were in use and famous long-prior to Respondent's registration and use of the disputed domain name <basspro.xxx>.
Complainant argues that the disputed domain name is identical to the BASS PRO mark and is confusingly similar and nearly identical to Complainant’s BASS PRO SHOPS mark. Furthermore, Complainant argues that the disputed domain name is confusingly similar to its abovementioned gTLD domain name <basspro.com>.
Complainant submits that the fact that the disputed domain name does not contain the term "shops" is irrelevant because Complainant is known as BASS PRO and operates a website to which the domain name <basspro.com> resolves.
Complainant further submits that the omission of the generic word "shops" does nothing to distinguish the disputed domain name <basspro.xxx> which is obviously deceptive.
Furthermore Complainant submits that it is well-established that the addition of ".xxx" TLD suffix does not distinguish the disputed domain name, citing HEB Grocery Co., L.P. v. Eric Gonzales, FA 1421851 (Nat. Arb. Forum, Feb. 7, 2012) ( "merely adding the ".xxx" top-level domain to the HEB mark does not differentiate the disputed domain name in any material way, and that the domain and mark are identical..."); see also Europcar Intl SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) ("Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).").
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent is not using, and has not attempted to use, the disputed domain name <basspro.xxx> in connection with any bona fide offering of goods or services, citing HEB Grocery Co., L.P. v. Eric Gonzales, FA 1421851 (Nat. Arb. Forum, Feb 7, 2012); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) ("The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant's mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate non-commercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)."); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent's non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant points to the fact that Respondent's name is Katherine Stanley; that Respondent is not commonly known by the name BASS PRO or the disputed domain name <basspro.xxx>, and that Respondent does not own any trademark registrations for the BASS PRO mark.
Complainant states that it has not authorized Respondent to use the BASS PRO mark in any way, citing Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (finding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii), where the relevant 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 where a complainant had not authorized that respondent to register a domain name containing its mark); see also Etsy, Inc. v. Above.com Domain Privacy, FA 1404127 (Nat. Arb. Forum Sept. 30, 2011).
Complainant submits that Respondent does not operate any business under the disputed domain name or the name BASS PRO. The website to which the disputed domain name <basspro.xxx> resolves makes no reference to any legitimate business carried on by Respondent under the disputed domain name or the name BASS PRO. See Toronto-Dominion Bank v. Karpachev, 188 F. Supp. 2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
Complainant argues that Respondent does not make any active use of the disputed domain name and does not have a conceivable legitimate use of the disputed domain name domain, in violation of Rapid Evaluation Service (“RES”) policy, RES 113(d)(i), which may be considered by the Panel in this UDRP proceeding. See HEB Grocery Co., L.P. v. Eric Gonzales, FA 1421851 (Nat. Arb. Forum Feb 7, 2012) (“The Panel finds that Respondent cannot make a conceivable legitimate use of the <heb.xxx> domain name, and determines that Respondent fails to satisfy RES ¶ 3(d)(i).”)
Complainant submits that Respondent registered and is using the disputed domain name <basspro.xxx> in bad faith, with obvious intent to cause confusion or mistake and to deceive consumers and divert traffic away from Complainant's legitimate website at <basspro.com>.
Complainant submits that the disputed domain name <basspro.xxx> was registered subsequent to Complainant's first use and registration of the BASS PRO mark.
Complainant argues that Respondent's failure to make any bona fide use of the disputed domain name <basspro.xxx>, and the lack of any conceivable legitimate use of the disputed domain name demonstrate Respondent's bad faith, citing HEB Grocery Co., L.P. v. Eric Gonzales, FA 1421851 (Nat. Arb. Forum Feb 7, 2012) (“The Panel finds that Respondent’s registration and failure to make an active use of the disputed domain name are evidence of bad faith registration and use under the Policy ¶ 4(a)(iii)."); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent's failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant claims that Respondent specifically selected and registered the disputed domain name <basspro.xxx> to draw traffic and business away from Complainant’s website to Respondent's website.
Complainant states that Respondent failed to cease its infringing activities or transfer its the disputed domain name despite having been sent notice by letter dated January 11, 2012, of Complainant’s prior rights and a request that the domain name be transferred; Respondent replied on January 19, 2012. Respondent replied indicating that she had "no intention" of transferring the disputed domain name to Complainant.
B. Respondent
Respondent requests this Administrative Panel to refuse to grant the relief sought by Complainant.
Respondent argues that the disputed domain name <basspro.xxx> should not be considered confusingly similar to Complainant's products or services due to the clear differences between what Complainant offers and the purpose for which the disputed domain name <basspro.xxx> is designed.
Respondent accepts that Complainant is a premier sports equipment and outdoor recreation retailer but argues that the disputed domain name <basspro.xxx> does not have any relation to such type of product or service.
Respondent submits that, as with all .xxx domain names, the disputed domain name was purchased for use in the adult entertainment industry. Respondent argues that although the disputed domain name <basspro.xxx> is similar to Complainant’s <basspro.com> domain name, the disputed domain name “can be looked at in other ways than simply ‘bass pro’”.
Respondent argues that there should be no confusion between Complainant and the disputed domain name because they represent two completely different products and services.
Respondent submits that as the purchaser of the disputed domain name, she has “rights to use the website (sic)” as long as it does not infringe a trademark, misleadingly divert customers, tarnish a name or mark, or act in bad faith. Respondent denies that she is in any way guilty of any such activity since the disputed domain name has been inactive. Respondent states that there is no timeline dictating how fast she must build and publish a website, arguing that a business takes a considerable amount of time to plan.
Respondent submits that she never made any attempt to sell, rent or transfer the disputed domain name.
Respondent accepts that she was contacted by Complainant demanding that she immediately transfer the disputed domain name over to them but argues that her response that she had "no intention" of transferring the disputed domain name to Complainant supports her argument that it was never her intention to transfer the disputed domain name <basspro.xxx> to anyone.
Respondent states that after the Complaint was filed, Respondent sent e-mails to the representative for Complainant on two occasions (March 15, 2012 and March 23, 2012) attempting to amicably resolve this dispute. Respondent submits that she offered to transfer the disputed domain name to Respondent for the reimbursement of her purchase cost and the fee that she was charged when the registration was created. Complainant’s representative did not respond to her offer.
Respondent submits that she has no history of ever trying to prevent an owner of a trademark or service mark from reflecting the mark in a corresponding domain name; that Respondent is not a competitor of Complainant; that Respondent has no interest in taking any business away from Complainant; and that Respondent will not interfere with any part of Complainant’s business.
Finally, Respondent submits that the disputed domain name <basspro.xxx> has never resolved to a website, and therefore Respondent could not have attempted to gain anything through Complainant's mark and she has no intention of affiliating Complainant and its marks with the disputed domain name <basspro.xxx> in the future.
This Panel finds as follows:
The following trademarks are registered in the name of Complainant:
BASS PRO SHOPS NEXT GENERATION, registration number 3,315,532, registered in International class 41 in respect of “Entertainment services in the nature of ongoing television programs in the fields of hunting and fishing” on 10/23/2007;
BASS PRO SHOPS NEXT GENERATION, registration number 3,596,651, registered in International class 25 in respect of “Apparel and headwear” on 03/24/2009;
BASS PRO SHOPS, registration number 3,754,134, registered in International class 9 in respect of “Computer game software; batteries, flotation devices” on 03/02/2010;
BASS PRO SHOPS, registration number 3,869,202, registered in International class 28 in respect of ”Fishing tackle, lottery tickets, toy vehicles, toys” on 11/02/2010; and
BASS PRO SHOPS SUMMER FAMILY CAMP, registration number 4,090,782, registered in International class 41 in respect of “Summer camp services, conducting workshops in field of camping” on 01/24/2012.
The following trademarks and service marks are registered in the name of Bass Pro Trademarks LP:
Bass Pro Trademarks LP U.S. registered trademark registration number 2,192,947, BASS PRO, registered on the Principal Register on October 6, 1998 in International class 28 for “Fishing tackle in class 28”;
BASS PRO SHOPS OUTDOOR WORLD, registration number 1,950,067, registered in International class 42 for “Retail sporting goods store services” on 01/23/1996;
BASS PRO SHOPS SPORTSMAN'S WAREHOUSE, registration number 2,071,417, registered in International class 42 for “Retail stores featuring clothing, fishing supplies and sporting goods” on 06/17/1996;
BASS PRO SHOPS and design, registration number 2,081,740, registered in International class 27 for “Clothing, namely caps, coats, jackets, pants and shirts” on 07/22/1997;
BASS PRO SHOPS and design, registration number 2,193,041, registered in International class 28 for “Fishing tackle” on10/06/1998;
BASS PRO SHOPS and design, registration number 2,191,778, registered in International class 16 for “Mail order catalogs in the field of hunting, fishing and outdoor gear” on 09/29/1998;
BASS PRO SHOPS and design registration number 2,193,039, registered in international class 35 for “Retail store services in the field of hunting, fishing and outdoor gear” on 10/06/1998;
BASS PRO SHOPS OUTDOOR WORLD, registration number 2,192,974, registered in International class 41 for “Entertainment services in the nature of ongoing television programs in the fields of hunting and fishing” on 10/06/1998;
BASS PRO SHOPS OUTDOOR WORLD and design, registration number 2,207,865, registered in International class 41 for “Advertising and promoting the goods and services of others via online computer and computer accessible networks” on 09/11/2001; and
BASS PRO SHOPS, registration number 3,296,836, registered in International class for ”Computer game software” on 09/25/2007;
The trademark BASS PRO SHOPS, registration number 1,116,517, was registered in respect of “Combined distributorship services in the field of fishing supplies, retail fishing supply store services” on 04/10/1979 in the name of Bass Pro Lures LP.
The disputed domain name was registered on December 10, 2011 and has remained inactive from the date of registration to the date 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.
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."
Complainant has, however, provided copies of registration certificates as evidence of its rights in the trademark and service marks BASS PRO SHOPS NEXT GENERATION and BASS PRO SHOPS through the following U.S.P.T.O registrations: BASS PRO SHOPS NEXT GENERATION, registration number 3,315,532, BASS PRO SHOPS NEXT GENERATION, registration number 3,596,651, and BASS PRO SHOPS, registration number 3,754,134 each of which pre-date the registration of the disputed domain name on December 10, 2011.
Complainant’s trademark registration number 4,090,782 for BASS PRO SHOPS SUMMER FAMILY CAMP was registered as recently as 01/24/2012 which is subsequent to the date on which the disputed domain name was registered.
The dominant and distinctive elements of Complainant’s trademarks and service marks are the words “BASS” and “PRO” in combination. The words “shops” is a generic and descriptive element and is less significant when making the comparison between the disputed domain name and Complainant’s mark. Similarly the words “next” and “generation” in combination are less distinctive than the “BASS PRO” element.
The principle that panels should in most cases ignore the gTLD extension when comparing a domain name and a trademark has been generally applied by panels established under the Policy in respect of established gTLDs. In the view of this Panel there is no reason to deviate from this general principle in respect of the .xxx domain and the issue should be resolved by comparing the respective overall impressions made by the marks in which a complainant has rights and the domain name that is the subject of the complaint under the Policy. See HEB Grocery Co., L.P. v. Gonzales, FA 1421851 (Nat. Arb. Forum February 7, 2012) (finding that the addition of the top-level domain “.xxx” did not bar the panel from finding that the <heb.xxx> domain name was identical to the HEB mark); see also The Toronto-Dominion Bank v. eLove Media LLC., / Ming Li, FA 1429679 (Nat. Arb. Forum March 22, 2012) (finding that the respondent’s failure to make changes beyond the removal of spaces between words in the complainant’s mark and the addition of the top-level domain “.xxx” rendered the disputed domain name identical to the complainant’s mark under Policy ¶ 4(a)(i)).
The disputed domain name is composed of the dominant and distinctive elements of Complainant’s BASS PRO SHOPS and BASS PRO SHOPS NEXT GENERATION trademarks and service marks.
This Panel finds that the disputed domain name is confusingly similar to the trademarks and service marks BASS PRO SHOPS and BASS PRO SHOPS NEXT GENERATION.
Complainant has therefore succeeded in proving the first element of the test in Policy ¶ 4(a)(i).
It is well-established that, under Policy ¶ 4(a)(ii), if Complainant makes out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name the burden shifts to Respondent to show such rights or legitimate interests. 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.”).
In casu Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name arguing that the disputed domain name consists of the dominant and distinctive elements of Complainant’s trademark i.e. the words “BASS” and “PRO” in combination; that Complainant has not granted any permission or license to Respondent to use its trademark in a domain name; and that Respondent is not known by the domain name. The onus therefore shifts to Respondent to establish that she has such rights or legitimate interests.
Respondent’s case is that she is entitled to use the disputed domain name to establish an adult entertainment business on the .xxx domain; that she intends to use the disputed domain name in connection with a bona fide offering of goods or services but has not had the opportunity to put her plans into effect; that her plans to use the disputed domain name are legitimate because there would be no trademark infringement because she intends to establish a business that is entirely different from Complainant’s business; and there is no likelihood of confusion between the disputed domain name because the .xxx domain has been established for the purposes of providing adult content.
This Panel rejects the argument that Internet users would make a distinction between a domain name and an identical trademark mark merely because the domain name is registered on the .xxx domain. Furthermore, Respondent has not given any substantive information about her business plans. She merely states that she registered the disputed domain name with the intention of establishing an adult entertainment business unrelated to Complainant’s sports goods business. She has not provided any evidence of any demonstrable preparations to use the domain name for any such business. Importantly she has not provided any explanation as to why she chose and registered the domain name which is identical to both Complainant’s distinctive registered trademark and service mark BASS PRO and Complainant’s domain name <basspro.com>. Complainant has used the domain name <basspro.com> as the address of an active website since 1996 and it is most improbable that Respondent would not have been aware of Complainant’s business when the disputed domain name was chosen and registered.
Respondent does not claim to have been commonly known by the domain name or to be making a legitimate noncommercial or fair use of the domain name.
This Panel finds that Respondent has failed to discharge the burden of proof with regard to the second element of the test in element of the test in Policy ¶ 4(a).
There is no evidence that Respondent engaged in any activity relating to the disputed domain name beyond passive holding of the registration.
This Panel finds that Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name was registered on December 10, 2011 at which time Complainant had already registered the BASS PRO SHOPS and BASS PRO SHOPS NEXT GENERATION trademarks. Furthermore, it would appear from the uncontroverted evidence of Complainant that its website at the <basspro.com> address was active since 1996.
It is improbable that Respondent was unaware of Complainant’s marks when she chose and registered the disputed domain name. It is far more probable that she knowingly chose and registered the disputed domain name because it was available and identical to the Complainant’s marks and <basspro.com> domain name.
Since the earliest cases under the Policy, panels have found that passive holding of a domain name is evidence of bad faith registration and use. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Respondent submits that after the Complaint was initiated, she offered to transfer the disputed domain name to Complainant in return for the reimbursement of her purchase cost and the fee that she was charged when the disputed domain name was created. She further submits that Complainant did not respond to her offer.
Respondent’s offer, however, was not made until after Complainant had commenced proceedings under the Policy. Prior to the commencement of this Complaint Respondent had taken the position that she had "no intention" of transferring the domain name to Complainant.
This Panel finds, therefore, that on the balance of probabilities the disputed domain name was knowingly chosen and registered to take predatory advantage of Complainant’s goodwill and reputation and has since been passively held in bad faith.
Complainant has therefore succeeded in proving the third and final element of the test in 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 <basspro.xxx> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman, Panelist
Dated: April 24, 2012
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