University Athletic Association, Inc. v. Frank Apuzzo / FKLA, Inc.
Claim Number: FA1504001613918
Complainant is University Athletic Association, Inc. (“Complainant”), represented by Meredith Frank Mendez of Malloy & Malloy, P.L., Florida, USA. Respondent is Frank Apuzzo / FKLA, Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <floridagators.com>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 10, 2015; the Forum received payment on April 10, 2015.
On April 10, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <floridagators.com> 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 April 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2015 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@floridagators.com. Also on April 20, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2015 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 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 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
Complainant, University Athletic Association, Inc. (“UAA” or “Complainant”) is the owner of the following incontestable registration with the United States Patent and Trademark Office (USPTO); U.S. Registration No. 2,349,246, registered May 16, 2000, for the mark “FLORIDA GATORS” for use in connection with clothing, namely, shirts, T-shirts, sweat shirts, sweat pants, sweaters, coats, caps and hats in International Class 025 and entertainment services, namely, arranging and conducting athletic events, tournaments and exhibitions in
International Class 041.
The <floridagators.com> domain name is identical or confusingly similar to the FLORIDA GATORS mark. The domain name incorporates Complainant’s registered mark and simply adds the generic top-level domain (“gTLD”) “.com” to the domain name.
The Respondent possesses no rights or legitimate interests in the Disputed the Domain Name which is the subject of this Complaint. Respondent has made no use of or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services before the University first used the “FLORIDA GATORS” Mark.
Respondent has engaged in bad faith registration and use of the <floridagators.com> domain name. Specifically, the Respondent has used the Domain Name solely for the purpose of deceiving and diverting consumers and intentionally confusing and misdirecting consumers into believing its website was an official University website or was affiliated with or sponsored by the University.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is University Athletic Association, Inc. of Gainesville, FL, USA. Complainant is the owner of numerous incontestable domestic registrations for the marks GATORS and FLORIDA GATORS (family of GATOR marks) which it uses in connection with the provision of goods and services related to athletic and scholastic events associated with the University of Florida. The University of Florida’s mascot is an alligator and since at least as early as 1955, and continuously thereafter, the University’s athletic teams have been known as the GATORS and FLORIDA GATORS.
Respondent is Frank Apuzzo / FKLA, Inc. of Orlando, FL, USA. Respondent’s registrar’s address is indicated as Scottsdale, AZ. Respondent registered the disputed domain name on or about January 17, 1997.
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 owns the FLORIDA GATORS mark through its registration with the USPTO (e.g., Registration No. 2,349,246, registered May 16, 2000). Complainant uses the mark in connection with its provision of goods and services related to athletic, scholastic, educational and entertainment events at the University of Florida. Previous panels have held that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
Complainant asserts that the <floridagators.com> domain name is identical or confusingly similar to its FLORIDA GATORS mark. The domain name fully incorporates Complainant’s registered mark and simply adds the gTLD “.com” to the domain name. Prior panels have found that that the addition of a gTLD does not serve to differentiate the disputed domain name from the registered mark. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). The Panel here finds that the <floridagators.com> disputed domain name is identical or confusingly similar under 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), 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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Further, Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant states that it has never authorized or licensed Respondent to use its FLORIDA GATORS trademark. In light of the available WHOIS information and the fact that Respondent has failed to provide any evidence for the Panel’s consideration, the Panel finds that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name according to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant additionally argues that Respondent’s lack of rights or legitimate interests in the <floridagators.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant alleges that Respondent’s disputed domain name resolved to a page that gave the false impression that it was an official University of Florida website by featuring information about the school, teams, images and photographs of athletes and mascots as well as links to Gator clubs” across the country. Respondent’s website also provided a marketplace for University sporting event tickets and links to websites where consumers could buy merchandise bearing the FLORIDA GATORS mark. Respondent presumably profited off of the traffic to and use of the website. Past panels have found that the use of hyperlinks to redirect Internet users to a complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel here finds that Respondent’s website established using the disputed domain name was not a legitimate noncommercial or fair use under the Policy.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As 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.
Respondent registered, and continued until on or about March 2, 2015, to use the Disputed Domain Name with full knowledge of Complainant’s well-known, registered FLORIDA GATORS and GATORS marks. Following receipt of Complainant’s cease and desist letter, Respondent, on or about March 2, 2015, removed from the <floridagators.com> website all references to the University’s registered marks and the University, removed the University’s football and basketball teams’ schedules, removed the images and photographs of University athletes and mascots, removed the information and links to “Gator Clubs”, stopped using orange and blue colors, and removed the link to the “Florida Gator Fan Super Store.” Registrant completely changed the website content to a website about Florida alligators. The website currently states at the top: “This is a Website about Florida Alligators. Florida Alligators Are Also Called Gators or Gator For Short. FloridaGators.com – Info About Florida Alligators & Real Alligator Products.
Respondent’s behavior indicates Respondent’s awareness that the information on the website at the time Respondent was contacted was unauthorized, that the offerings were not bona fide, and that Respondent registered and was using the disputed domain name in bad faith. Further, Respondent registered the disputed domain name on January 17, 1997, over forty (40) years after Complainant’s first use of “FLORIDA GATORS” Mark and approximately fourteen (14) years after the registration of the “GATORS” mark (U.S. Registration No. 1,222,098) in 1982. According to WHOIS records, Respondent is located in Orlando, Florida, which is approximately 110 miles from the University’s location in Gainesville, Florida.
Complainant argues that Respondent intentionally attracted, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark and sending consumers to an unauthorized site for the purchase of Complainant’s goods and services. Complainant asserts that this re-routing allowed Respondent to generate click-through revenue. Prior panels have found that using a disputed domain name to feature hyperlinks on the resolving website demonstrates bad faith registration and use. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Previous panels have additionally found that a respondent who creates a confusing similarity, and attempts to commercially benefit in the process by offering competing goods or services, has engaged in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). The Panel here finds that Respondent registered and was using the disputed domain name in bad faith.
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 <floridagators.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 1, 2015
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