Canadian Hockey Association v. Christensen Gordon / Gordon Christensen
Claim Number: FA1402001544554
Complainant is Canadian Hockey Association (“Complainant”), represented by David S Lipkus of Kestenberg Siegal Lipkus LLP, Ontario, Canada. Respondent is Christensen Gordon / Gordon Christensen (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shophockeycanada.com>, registered with Bizcn.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2014; the National Arbitration Forum received payment on February 20, 2014. The Complaint was submitted in both Chinese and English.
On February 21, 2014, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <shophockeycanada.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 February 25, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 17, 2014 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@shophockeycanada.com. Also on February 25, 2014, 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 24, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
a. Policy ¶ 4(a)(i)
i. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the HOCKEY CANADA mark (Reg. No. 3,608,924, registered April 21, 2009).
ii. Complainant uses the HOCKEY CANADA mark in connection with the production, sale, and licensing of men’s and women’s sports apparel.
iii. Complainant has put substantial effort into promoting and advertising the HOCKEY CANADA mark such that it has garnered significant recognition.
iv. Respondent’s domain name is confusingly similar to Complainant’s mark.
b. Policy ¶ 4(a)(ii)
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent’s use of the domain name to sell counterfeit products bearing Complainant’s mark does not constitute a bona fide offering of goods or a legitimate non-commercial or fair use.
c. Policy ¶ 4(a)(iii)
i. Respondent registered and is using the disputed domain name in bad faith.
ii. Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website which Respondent’s domain name resolves, where Respondent presumably obtains commercial benefits through the sale of counterfeit products bearing Complainant’s mark.
iii. It is clear that Respondent had knowledge of the HOCKEY CANADA mark when it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceeding. However, 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 is Canadian Hockey Association of Calgary, AB, Canada. Complainant is the owner of domestic and international registrations for the mark HOCKEY CANANDA and related marks which comprise the “Hockey Canada Marks” group. Complainant has continuously used the HOCKEY CANADA mark since as early as 1994 in connection with the production, sale and licensing of men’s and women’s hockey apparel and merchandise.
Respondent is Christensen Gordon / Gordon Christensen of Prosser, Washington, USA. Respondent’s registrar’s address is listed as Xiamen Fujian, China. Respondent registered the <shophockeycanada.com> domain name on or about January 11, 2014.
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 contends that it has been engaged in the production, sale, and licensing of men’s and women’s apparel, including hockey jerseys, in association with the HOCKEY CANADA mark. Complainant argues that it is the owner of a trademark registration with the USPTO for the HOCKEY CANADA mark (Reg. No. 3,608,924, registered April 21, 2009). The Panel notes that Respondent resides within the United States, and therefore finds that Complainant’s registration of the HOCKEY CANADA mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant asserts that Respondent’s <shophockeycanada.com> domain name is confusingly similar to Complainant’s HOCKEY CANADA mark. Complainant alleges that the disputed domain name incorporates Complainant’s HOCKEY CANADA mark in its entirety and adds the generic term “shop.” Complainant argues that the addition of the generic term “shop” was likely selected by Respondent because Complainant’s retail website is <shop.hockeycanada.ca>, and Internet users may forget to type “.” after “shop” when seeking Complainant’s website. The Panel notes that Respondent’s inclusion of a generic term does not save the resulting domain name from confusing similarity pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel observes that Respondent also removes the space in Complainant’s HOCKEY CANADA mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel further notes that Respondent’s omission of the space between the two-word mark, as well as the inclusion of a gTLD, does not differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds that Respondent’s <shophockeycanada.com> domain name is confusingly similar to Complainant’s HOCKEY CANADA mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant argues that Respondent is not commonly known by the <shophockeycanada.com> domain name. Complainant asserts that Respondent has no proprietary rights in the HOCKEY CANADA mark or the disputed domain name. Complainant alleges that the WHOIS information identifies the registrant as ”Christensen Gordon / Gordon Christensen,” demonstrating that Respondent is not known by the name <shophockeycanada.com>. Complainant further contends that it has not authorized or licensed Respondent to use the mark or register a domain name which incorporates the HOCKEY CANADA mark. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. The Panel here finds that Respondent is not commonly known by the <shophockeycanada.com> domain name under Policy ¶ 4(c)(ii), based on the available evidence in the record.
Complainant claims that Respondent’s use of the <shophockeycanada.com> domain name to sell presumably counterfeit products bearing Complainant’s mark does not constitute a bona fide offering of goods, or a legitimate noncommercial or fair use. The Panel notes that Respondent’s website provides hockey apparel, such as jerseys, which are presumed to be counterfeit. Previous Panels have determined that the unauthorized sale of a complainant’s authentic or counterfeit goods does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Mycoskie, LLC v. Zheng Qing, FA 1488243 (Nat. Arb. Forum April 14, 2013) (“Respondent operates as a counterfeiter whose purpose is to sell counterfeit TOMS goods to unsuspecting consumers. Respondent’s disputed domain name resolves to a website that sells counterfeit TOMS products. Respondent’s use of the disputed domain name to sell counterfeit TOMS goods is not a bona fide offering of goods and services or a legitimate noncommercial fair use, pursuant to Policy ¶ 4(c)(i) and (iii)); see also 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). The Panel here finds that Respondent’s use of the domain name to sell potentially counterfeit products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair under Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to Respondent’s website, from which Respondent presumably obtains commercial benefits through the sale of counterfeit products bearing Complainant’s mark. The Panel again notes that Respondent’s <shophockeycanada.com> domain name resolves to a site that provides hockey apparel, which Complainant presumes to be counterfeit. In Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), the panel found that respondent attempted to commercially gain by creating confusion as to complainant’s connection with the website by selling counterfeit products, which supports a finding of bad faith. The Panel here finds evidence of bad faith use and registration under Policy ¶ 4(b)(iv), as Respondent has attempted to divert consumers for its own commercial gain through the sale of counterfeit products.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <shophockeycanada.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 7, 2014
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