All Star C.V. v. Daniel Diaz
Claim Number: FA1507001630360
Complainant is All Star C.V. (“Complainant”), represented by Laura C. Gustafson of Pillsbury Winthrop Shaw Pittman, LLP, California, United States. Respondent is Daniel Diaz (“Respondent”), Colombia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allstar.com.co>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 23, 2015; the Forum received payment on July 27, 2015.
On July 27, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <allstar.com.co> 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 July 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 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@allstar.com.co. Also on July 29, 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 August 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions
Complainant is a globally well-known company and a leading manufacturer of athletic shoes and apparel, with retail stores throughout the United States and countries around the world. Complainant owns and has been using its ALL STAR mark for nearly a century. The Panel notes Attached Exhibit C for additional information on Complainant’s business. Complainant has registered the ALL STAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 369,971, registered August 8, 1939), which demonstrates its rights in the mark. The Panel notes Attached Exhibit A for copies of Complainant’s USPTO registrations. Respondent’s disputed domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s entire ALL STAR mark, merely adds the generic top-level domain (“gTLD”) “.com” and the country code top-level domain (“ccTLD”) “.co,” and eliminates the spaces between the words of Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor any variant of Complainant’s mark, and Respondent has not been licensed or authorized to use the ALL STAR mark. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert Internet users away from Complainant’s legitimate websites and away from legitimate, authorized ALL STAR product sales.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent uses the disputed domain name for the purpose of disrupting Complainant’s legitimate commercial interests by diverting consumers away from Complainant’s legitimate websites, and to Respondent’s unauthorized website. Second, Respondent has intentionally attempted to benefit from the goodwill and fame of Complainant’s mark in order to attract, for commercial gain, Internet users to its website, and divert users from Complainant’s legitimate websites. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a globally well-known company and a leading manufacturer of athletic shoes and apparel, with retail stores throughout the United States and countries around the world.
2. Complainant has registered the ALL STAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 369,971, registered August 8, 1939), which demonstrates its rights in the mark.
3. The disputed domain name was registered on March 8, 2011.
4. Respondent uses the disputed domain name to divert Internet users away from Complainant’s legitimate websites and away from legitimate, authorized ALL STAR product sales.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant is a globally well-known company and a leading manufacturer of athletic shoes and apparel, with retail stores throughout the United States and countries around the world. Complainant owns and has been using its ALL STAR mark for nearly a century. Complainant has registered the ALL STAR mark with the USPTO (e.g., Reg. No. 369,971, registered August 8, 1939). Complainant submits that this USPTO registration demonstrates Complainant’s rights in its mark. Complainant has submitted Attached Exhibit A to the Complaint setting out evidence of Complainant’s USPTO registrations. The Panel concludes that a trademark registration with the USPTO suffices to demonstrate a Complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has demonstrated its rights in the ALL STAR mark pursuant to Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ALL STAR mark. Complainant argues that Respondent’s disputed domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s entire ALL STAR mark, merely adds the gTLD “.com” and the ccTLD “.co,” and eliminates the spaces between the words of Complainant’s mark. Past panels have held that the affixation of a gTLD or ccTLD to a complainant’s domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Past panels have also concluded that the elimination of spaces between the words of a complainant’s mark is also irrelevant to a Policy ¶ 4(a)(i) analysis. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s ALL STAR mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ALL STAR mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on March 8, 2011;
(c) Respondent has used the disputed domain name to divert Internet users away from Complainant’s legitimate websites and away from legitimate, authorized ALL STAR product sales ;
(d) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use the ALL STAR mark. The Panel notes that the WHOIS information merely lists “Daniel Diaz” as registrant and that Respondent has failed to submit any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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);
(e) Complainant contends that Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). Rather, Complainant argues that Respondent uses the disputed domain name to divert Internet users away from Complainant’s legitimate websites and away from legitimate, authorized ALL STAR product sales. Complainant asserts that Respondent’s website features information falsely suggesting it is an authorized All Star seller, including a header on Respondent’s home page that reads “Converse All Star Colombia” and the “legal notice” section of the website that contains a page of corporate information about an affiliate of Complainant. Past panels have found no bona fide offering of goods or services and no legitimate noncommercial or fair use where the respondent attempts to divert Internet users seeking the complainant’s website to the website of the respondent and for the respondent’s benefit. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent uses the disputed domain name for the purpose of disrupting Complainant’s legitimate commercial interests by diverting consumers away from Complainant’s legitimate websites, and to Respondent’s unauthorized website. The Panel notes that Complainant argues in its complaint that Respondent appears to offer four styles of All Star-branded ALL STAR shoes on its resolving webpage. The Panel notes Attached Exhibit D providing copies of printouts from Respondent’s website, showing the presentation of out of stock alleged All Star shoes. As the Panel determines that Respondent is using the disputed domain name to sell Complainant’s products, it concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Secondly, Complainant contends that Respondent has intentionally attempted to benefit from the goodwill and fame of Complainant’s mark in order to attract, for commercial gain, Internet users to its website, and divert users from Complainant’s legitimate websites. Specifically, Complainant maintains that, through Respondent’s incorporation of the entire ALL STAR mark, it is attempting to benefit from a perceived affiliation with Complainant and the ALL STAR mark. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iv) where the disputed domain name was obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Accordingly, the Panel finds that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s ALL STAR mark, thereby engaging in conduct proscribed by Policy ¶ 4(a)(iii). In so arguing, Complainant relies on the fact that Respondent registered the disputed domain name long after All Star’s first use and registration of its ALL STAR marks. Past panels have found bad faith pursuant to Policy ¶ 4(a)(iii) where a respondent was aware of the complainant’s well-known mark at the time of the registration of the disputed domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). As such, the Panel concludes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <allstar.com.co> domain name using the ALL STAR mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allstar.com.co> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 24, 2015
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