K-2 Corporation v. CWS Web Solutions
Claim Number: FA1304001495355
Complainant is K-2 Corporation (“Complainant”), represented by Dan Cohn, Missouri, USA. Respondent is CWS Web Solutions (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atlassnowshoes.com>, registered with GKG.NET, INC.
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 A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 18, 2013; the National Arbitration Forum received payment on April 18, 2013.
On April 18, 2013, GKG.NET, INC. confirmed by e-mail to the National Arbitration Forum that the <atlassnowshoes.com> domain name is registered with GKG.NET, INC. and that Respondent is the current registrant of the name. GKG.NET, INC. has verified that Respondent is bound by the GKG.NET, INC. 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 April 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2013 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@atlassnowshoes.com. Also on April 19, 2013, 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 May 9, 2013.
On May 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s < atlassnowshoes.com > domain name, the domain name at issue, is confusingly similar to Complainant’s ATLAS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent makes the following assertions:
1. Respondent registered the domain name at issue on September 2, 2000, prior to Complainant’s US registration of the Atlas mark on September 26, 2000.
2. Respondent’s disputed domain name resolves to a page that provides a list of Complainant’s snowshoes, allowing visitors to purchase these shoes through legitimate retailers.
3. Respondent’s compensation is not illegal and does not mislead Internet users.
4. Respondent is attempting to aid in the sales of Complainant’s snow shoes.
5. Respondent is not portraying itself to be Complainant.
6. Respondent’s resolving website sends visitors to retailers who sell products beyond Complainant’s shoes, which is also what Complainant’s website does.
7. Respondent operates a legitimate business.
8. Complainant does not have rights in the ATLAS SNOWSHOES mark.
Complainant uses the ATLAS mark in connection with marketing and sales of snowshoes, snowshoe poles, backpacks and related sporting equipment. Complainant owns rights in its ATLAS mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,521,493 registered December 25, 2001); and (Reg. No. 2,390,080 registered September 26, 2000). Moreover, Complainant owns a Japanese registration for ATLAS for “sporting articles, especially snowshoes”, etc., Reg. No. 2,036,377, registered April 26, 1988, and ten other foreign registrations for various forms of the ATLAS mark. Respondent registered the domain name at issue on September 2, 2000, prior to Complainant’s registrations of its ATLAS mark with the USPTO, but after several of Complainant’s international registrations of the mark. Respondent’s <atlassnowshoes.com> domain name is confusingly similar to Complainant’s ATLAS marks. Respondent’s <atlassnowshoes.com> domain name differs from Complainant’s registered ATLAS SNOWSHOE COMPANY mark by elimination of the term “company” and the addition of the letter “s.” Respondent is not commonly known by the <atlassnowshoes.com> domain name. Complainant has not licensed Respondent to use any of its ATLAS marks. Respondent’s disputed domain name resolves to a page that provides a list of Complainant’s snowshoes, allowing visitors to purchase these shoes through legitimate retailers.
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.
Complainant uses the ATLAS mark in connection with marketing and sales of snowshoes, snowshoe poles, backpacks and related sporting equipment. Complainant owns rights in its ATLAS mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,521,493 registered December 25, 2001); and (Reg. No. 2,390,080 registered September 26, 2000). Moreover, Complainant owns a Japanese registration for ATLAS for “sporting articles, especially snowshoes”, etc., Reg. No. 2,036,377, registered April 26, 1988, and ten other foreign registrations for various forms of the ATLAS mark. Respondent registered the domain name at issue on September 2, 2000, prior to Complainant’s registrations of its ATLAS mark with the USPTO, but after several of Complainants international registrations. Evidence of registration for a trademark with a recognized authority is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Dollar Fin. Grp., Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO); see also Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with various authorities, including the Office for Harmonization in the Internal Market (“OHIM”)); see also Moroccanoil, Inc. v. Alter, FA 1355353 (Nat. Arb. Forum Dec. 7, 2010) (finding that a trademark registration with the JPO, among others, was sufficient for complainant to establish rights in its mark under Policy ¶ 4(a)(i)). ). Although Respondent appears to reside in the United States, the Panel finds that Complainant does not need to register its mark in the country in which Respondent resides. 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel thus finds that Respondent owns rights in its ATLAS and ATLAS SNOW-SHOE COMPANY trademarks under Policy ¶ 4(a)(i).
Respondent’s <atlassnowshoes.com> domain name is confusingly similar to Complainant’s ATLAS trademarks under Policy ¶ 4(a)(i). The only differences between Complainant’s ATLAS SNOW-SHOE COMPANY trademark and Respondent’s <atlassnowshoes.com> domain name is the missing word “company” and the addition of the letter “s.” Respondent also adds the generic top-level domain “gTLD” “.com” and eliminates the hyphen. Variations such as adding generic terms and letter are insufficient to differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark). Accordingly, Respondent’s <atlassnowshoes.com> domain name is confusingly similar to Complainant’s ATLAS SNOW-SHOE COMPANY trademark.
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”).
Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by it. Complainant claims that Respondent is not an authorized dealer of Complainant’s products, and that Complainant has not licensed it to use any of its ATLAS trademarks. The Panel notes that the WHOIS information for the <atlassnowshoes.com> domain name lists “CWS” as Registrant. Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no evidence in the record indicating that the respondent was commonly known by the disputed domain name. See 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). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) and thus has no rights or interests in the <atlassnowshoes.com> disputed domain name.
Respondent has no rights or legitimate interests in the <atlassnowshoes.com> disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial fair use of the disputed domain name. Respondent uses the disputed domain name to resolve to a website that features links to third-party websites that sell Complainant’s goods and related goods not originating from Complainant. The links present on Respondent’s resolving website include, “Atlas Race Snowshoe,” “Atlas Elecktra 10 Series Snowshoe- Women’s,” “Atlas Elektra 8 Series FRS Snowshoe-Wor,” “Top Selling Atlas Snowshoes from Altrec.com,” “Winter Boot Wonderland,” and “You Earned This Up To 30% Off Mountain Hardwear.” Respondent’s use of this disputed domain name in such a manner deprives Complainant of its property rights in its registered mark and attracts consumers looking for Complainant and its goods to Respondent’s website. This behavior does not indicate a bona fide offering of goods and services or a legitimate noncommercial fair use of the disputed domain name. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). This Panel therefore finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
It appears to the Panel that Respondent has registered the <atlassnowshoes.com> disputed domain primarily for the purpose of disrupting Complainant’s business. Respondent uses the disputed domain name to divert customers of Complainant to Respondent’s resolving website featuring links to third-party websites selling products including Complainant’s products. Previous panels have found that featuring links to competing third parties as well as featuring Complainant’s products for sale indicates bad faith under Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent is intentionally attempting to attract Internet users, for commercial gain, to Respondent’s website and third-party links thereon by creating a likelihood of confusion with Complainant’s registered marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. It appears that Respondent is profiting from links to third-party websites by redirecting Internet users to its resolving website and then redirecting those users to third-party websites featuring Complainant’s products as well as other third-party products. Previous panels have found bad faith when a respondent offers services similar to those of a complainant’s and financially profits. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <atlassnowshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 24, 2013
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