Under Armour, Inc. v. Bob Pham
Claim Number: FA1410001585021
Complainant is Under Armour, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Bob Pham (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <underarnour.com>, registered with RegisterMatrix.Com Corp..
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2014; the National Arbitration Forum received payment on October 15, 2014.
On October 19, 2014, RegisterMatrix.Com Corp. confirmed by e-mail to the National Arbitration Forum that the <underarnour.com> domain name is registered with RegisterMatrix.Com Corp. and that Respondent is the current registrant of the name. RegisterMatrix.Com Corp. has verified that Respondent is bound by the RegisterMatrix.Com Corp. 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 October 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@underarnour.com. Also on October 27, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
i. Complainant owns the UNDER ARMOUR mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,279,668, registered September 21, 1999).
ii. Complainant uses the UNDER ARMOUR mark in connection with its business as a provider of performance apparel, footwear, sporting goods, accessories, and related goods and services.
iii. Complainant operates online through the <underarmour.com> domain name.
i. Policy ¶ 4(a)(i)
1. The <underarnour.com> domain name is confusingly similar to Complainant’s UNDER ARMOUR mark because Respondent has simply substituted the letter “n” for the “m” in the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <underarnour.com> domain name. Respondent is neither licensed nor authorized to use the UNDER ARMOUR mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent is using the disputed domain name to redirect confused Internet users to its own website featuring links to third-party websites, some of which directly compete with Complainant’s business.
iii. Policy ¶ 4(a)(iii)
1. Respondent has engaged in this behavior before. Respondent has had multiple previous UDRP decisions against it.
2. The <underarnour.com> domain name features links that promote products that directly compete with Complainant. Complainant argues that these links disrupt Complainant’s business.
3. Respondent uses the disputed domain name to redirect Internet users to its own website, in which it presumably receives “click through” fees for the traffic visiting the website.
4. Respondent’s typosquatting behavior is further evidence of bad faith.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 uses the UNDER ARMOUR mark in connection with its business as a provider of performance apparel, footwear, sporting goods, accessories, and related goods and services. Complainant claims to own the UNDER ARMOUR mark through its trademark registrations with the USPTO (e.g., Reg. No. 2279668, registered September 21, 1999). Complainant argues that such registrations are sufficient to establish rights in the UNDER ARMOUR mark pursuant to Policy ¶ 4(a)(i) requirements, even though Respondent resides in Vietnam. Complainant’s argument is supported by previous UDRP decisions. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <underarnour.com> domain name is confusingly similar to Complainant’s UNDER ARMOUR mark because Respondent has simply substituted the letter “n” for the “m” in the mark. The disputed domain name also differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com” and the omission of the space between the words of the mark. Past panels have generally found that a domain differing from a mark by a single letter does not escape confusing similarity, and that the affixation of a gTLD coupled with the omission of a space between the words of a mark are irrelevant changes according to the Policy ¶ 4(a)(i) analysis. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”) ; see alsoBond & 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)). As such, the Panel finds that the <underarnour.com> domain name is confusingly similar to Complainant’s UNDER ARMOUR mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the <underarnour.com> domain name. The WHOIS information identifies “Bob Pham” as the registrant of the disputed domain name. Complainant claims that Respondent is neither licensed nor authorized to use the UNDER ARMOUR mark. Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <underarnour.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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).
Complainant argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant claims that the disputed domain name currently redirects Internet users to a website which features a variety of different links that promote products in direct competition with Complainant. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use, where the disputed domain name was used to forward Internet users to a respondent’s own website providing products competing with those of a complainant. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s current use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
Complainant has proven this element.
Complainant claims that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Complainant argues that Respondent has previously engaged in bad faith registration and use of disputed domain names. Specifically, Complainant argues that Respondent has had numerous previous UDRP decisions against it. Complainant argues that this demonstrates a pattern of bad faith behavior, and should be considered as evidence of bad faith pursuant to Policy ¶ 4(b)(ii). Past panels have supported similar arguments. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Thus, the Panel finds that Respondent has registered the <underarnour.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant argues that Respondent’s behavior is disrupting Complainant’s business and this is evidence of bad faith under Policy ¶ 4(b)(iii). Complainant claims that Respondent uses the disputed domain name to display a variety of different links to third-party websites, some of which promote products that directly compete with Complainant. Complainant claims that such behavior disrupts its business. Past panels have generally held that such actions qualify as evidence of bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Accordingly, the Panel finds that Complainant has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent is using the disputed domain name to redirect confused Internet users to its own website, where it presumably obtains “click through” fees by the increased traffic visiting the website. Past panels have found bad faith where respondents use the disputed domain name solely for their own commercial gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As a result, the Panel finds that Respondent is acting in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that Respondent’s behavior constitutes typosquatting. Panels have consistently held that typosquatting is meant to take advantage of typographical errors, and is thus motivated by bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Respondent argues that the <underarnour.com> domain name differs from the UNDER ARMOUR mark by a single letter, namely, the “m” is replaced with the letter “n”. The Panel agrees that circumstances demonstrate that Respondent has engaged in typosquatting, and finds this behavior is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <underarnour.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 25, 2014
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