TCR IP Holdings, LLC v. William Spata / 1N3 LLC
Claim Number: FA1508001633393
Complainant is TCR IP Holdings, LLC (“Complainant”), represented by Janet Shih Hajek of Holland & Hart LLP, Colorado, USA. Respondent is William Spata / 1N3 LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <colorrunnight.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2015; the Forum received payment on August 13, 2015.
On August 14, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <colorrunnight.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 August 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@colorrunnight.com. Also on August 17, 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 September 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant TCR IP Holdings, LLC owns federal trademark registrations for its THE COLOR RUN trademark through the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,535,516, registered May 27, 2014). Complainant uses its trademark, THE COLOR RUN, in connection with athletic and sport event services, namely, organizing, arranging, and conducting running events and running competitions. The <colorrunnight.com> domain name is confusingly similar to Complainant’s mark. The domain name incorporates the “COLOR RUN” portion of Complainant’s mark while omitting the word “THE.” The domain name adds the word “night” and inserts the generic top-level domain (“gTLD”) “.com.”
ii) Respondent should be found to have no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record demonstrates that Respondent is commonly known by “William Spata / 1N3 LLC,” a direct competitor to Complainant’s goods and services. Furthermore, Complainant has not authorized nor given permission to Respondent to use any of its trademarks. Respondent’s lack of rights or legitimate interests in the disputed domain name is made evident by Respondent’s failure to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Respondent uses the <colorrunnight.com> domain name to redirect Internet users to the website <blacklightrun.com>, which offers services that directly compete with Complainant.
iii) Respondent registered and is using the disputed domain name in bad faith. Respondent uses the disputed domain name primarily for the purpose of disrupting the business of a competitor. Further, Respondent attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Finally, Respondent had constructive or actual notice of Complainant and its trademark, THE COLOR RUN.
B. Respondent
Respondent did not submit a response. The Panel notes that this <colorrunnight.com> domain name was registered on March 27, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 TCR IP Holdings, LLC owns federal trademark registrations for its trademark, THE COLOR RUN, through the USPTO (e.g. Reg. No. 4,535,516, registered May 27, 2014). Complainant uses its trademark, THE COLOR RUN, in connection with athletic and sport event services, namely, organizing, arranging, and conducting running events and running competitions. Past panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to 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’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
Complainant argues that the <colorrunnight.com> domain name is confusingly similar to Complainant’s mark. The domain name incorporates the “COLOR RUN” portion of Complainant’s mark while omitting the word “THE.” The domain name adds the word “night” and inserts the gTLD “.com.” Past panels have found that merely omitting an article, such as “the,” and inserting a generic word are insufficient changes to distinguish the domain name from the mark. See Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the definite article “the” and the preposition “of” from the complainant’s mark and thus, failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Further, panelists have consistently found that the “.com” gTLD is irrelevant to the analysis of confusing similarity. 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). The Panel finds the <colorrunnight.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
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 alleges that Respondent should be found to have no rights or legitimate interests in the disputed domain name. Complainant urges that Respondent is not commonly known by the disputed domain name, as the WHOIS record demonstrates that Respondent is commonly known by “William Spata / 1N3 LLC,” a direct competitor to Complainant’s goods and services. Furthermore, Complainant contends that it has not authorized nor given permission to Respondent to use any of its trademarks. Lacking any contentions from Respondent to refute these allegations, the Panel finds that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under 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).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the disputed domain name is made evident by Respondent’s failure to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant insists that Respondent uses the <colorrunnight.com> domain name to redirect Internet users to the website <blacklightrun.com>, which offers services that compete directly with Complainant’s. Complainant contends that Respondent also owns the <blacklightrun.com> domain name, and that Respondent uses the <colorrunnight.com> domain name to point Internet users to the Blacklight Run road running race. Previous panels have determined that using a disputed domain name to redirect users to a direct competitor is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s competing use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant asserts that Respondent uses the disputed domain name primarily for the purpose of disrupting the business of a competitor. Past panels have agreed that use of a confusingly similar domain name to offer competing services suggests respondent’s bad faith under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion). The Panel therefore finds that Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant claims that Respondent chose a confusingly similar domain name to ride on the goodwill of Complainant’s mark in an attempt to exploit, for commercial gain, Internet traffic seeking out Complainant. Past panels have concluded that such behaviors constitute bad faith pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). The Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Finally, Complainant alleges that Respondent had constructive notice of Complainant and its trademark, THE COLOR RUN. Complainant contends that Respondent’s registration and use of a domain name that fully encompasses Complainant’s well known THE COLOR RUN mark is clearly to capitalize on initial interest confusion in order to attract Internet users searching for Complainant’s website and to exploit Internet users who may have mistyped Complainant’s trademark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <colorrunnight.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq. Panelist
Dated: September 22, 2015
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