ATP Tour, Inc. v. Mario Simonaitis
Claim Number: FA1702001715481
Complainant is ATP Tour, Inc. (“Complainant”), represented by Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Mario Simonaitis (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atptennisacademy.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2017; the Forum received payment on February 1, 2017.
On February 2, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <atptennisacademy.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 February 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2017 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@atptennisacademy.com. Also on February 2, 2017, 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.
A timely Response was received and determined to be complete on February 22, 2017.
Complainant’s Additional Submission was received on February 27, 2017, and determined to be compliant with the Rules.
Respondent’s Additional Submission was received on March 6, 2017, and determined to be compliant with the Rules.
All submissions were considered by the Panel.
On March 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, ATP Tour, Inc., was founded in 1972 and led by tennis superstar, Jack Kramer, for the purpose of acting as the governing body of the worldwide men’s professional tennis circuit. Complainant has enjoyed widespread recognition of its services through the use of the ATP mark. Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,372,952, registered Jan. 22, 2008), establishing rights in the mark. Respondent’s <atptennisacademy.com> is confusingly similar because it incorporates the ATP mark and follows it with descriptive terms “tennis” and “academy” and the irrelevant generic top-level domain (“gTLD”) suffix “.com.”
Respondent has no rights or legitimate interests in <atptennisacademy.com>. Respondent is not commonly known by the domain name pursuant to the WHOIS of record—as well as all the other evidence of record which does not indicate as much. Further, Respondent uses the website to display competing third-party hyperlinks, which is not a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used <atptennisacademy.com> in bad faith. Respondent attempted to sell the domain name to Complainant for an amount in excess of out-of-pocket costs, in direct violation of Policy ¶ 4(b)(i). Resolution to competing hyperlinks disrupts Complainant’s legitimate business under Policy ¶ 4(b)(iii) and Respondent is presumably profiting from this use, imputing Policy ¶ 4(b)(iv) bad faith. Lastly, given Complainant’s longstanding registrations of its ATP mark and worldwide recognition, Respondent had actual knowledge of Complainant and its rights in the ATP when registering and using the domain name, demonstrating bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent’s use of the acronym ATP is for “Advance Training of Professionals” rather than Complainant’s use as “Association of Tennis Professionals.” The meaning of the acronym differs and Respondent’s domain name is not confusingly similar to Complainant’s mark.
Respondent was poised to launch a website in connection with a legitimate business purpose, but suffered financial loss due to the filing of this dispute by Complainant, which caused potential investors to withdraw.
Respondent did not register or use the domain name in bad faith. A mere offer to sell does not necessarily prove bad faith under Policy ¶ 4(b)(i). Respondent never intended to attract, for commercial gain, Internet users to the website for the purpose of profiting; rather, Respondent intended to use the domain name in a noncompetitive manner.
C. Additional Submission—Complainant
Respondent does not dispute Complainant’s rights in the ATP mark. Respondent’s assertion that it is using the ATP acronym in a distinctive manner has no bearing on a Policy ¶ 4(a)(i) analysis. Further, Respondent also fails to explain why—if ATP stands for “Advance Training of Professionals”—he added the words “tennis” and “academy,” and how this avoids confusion.
Respondent has made only bare assertions of an intended use of the domain name. Additionally, alleged third-party uses of “ATP” in domain names do not establish Respondent’s rights or legitimate interests.
On February 21, 2017, Respondent registered another ATP-formative domain name. Correspondence shows an intent to use the newly registered domain as a bargaining chip, constituting further evidence of bad faith under Policy ¶ 4(b)(ii).
D. Additional Submission—Respondent
Complainant is ATP tour inc., not ATP.com or ATP inc. .
Respondent reviewed Complainant’s submissions and files and found no reference to the formation of a tennis academy.
Complainant does not have the jurisdiction over “all things tennis” or all things “ATP”.
After Respondent registered its domain, its initial investor withdrew. Respondent offered the domain to Complainant for an amount to offset the initial costs and tickets to an event. Respondent now has the required financial backing, and is moving forward with the academy.
Respondent registered the domain <atptennisacademy.com> in good faith and looks forward to the academy becoming a reality.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <atptennisacademy.com> domain name.
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.
Complainant argues it has registered the ATP mark with the USPTO (e.g., Reg. No. 3,372,952, registered Jan. 22, 2008). USPTO registrations confer rights in a mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the USPTO). Therefore, the Panel agrees that Complainant has established rights in the ATP mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <atptennisacademy.com> is confusingly similar because it incorporates the ATP mark and follows it with descriptive terms “tennis” and “academy” and the irrelevant gTLD suffix “.com.” The suffix “.com” has been found irrelevant under the Policy. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Further, Complainant asserts that its principal business has to do with tennis, and thus Respondent’s inclusion of the terms “tennis” and “academy” serve to heighten confusion. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel agrees that Respondent has not made alterations that distinguish the domain name from the ATP mark under Policy ¶ 4(a)(i).
In its Additional Submission, Complainant notes that Respondent does not dispute Complainant’s rights in the ATP mark. Further, Complainant argues that Respondent’s assertion that it is using the ATP acronym in a distinctive manner has no bearing on a Policy ¶ 4(a)(i) analysis. See See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)). Complainant also asserts that Respondent fails to explain why he added the words “tennis” and “academy” (if ATP stands for “Advance Training of Professionals”), and how this avoids confusion. The Panel agrees that Complainant has succeeded under Policy ¶ 4(a)(i).
Complainant has proved 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 (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 (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 has no rights or legitimate interests in <atptennisacademy.com>. Complainant argues that Respondent is not commonly known by the domain name pursuant to the WHOIS of record—as well as all the other evidence of record. WHOIS is looked to when evidence is lacking under this prong. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS lists “Mario Simonaitis” as registrant of record. Accordingly, the Panel agrees that this clearly indicates Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent uses the website to display competing third-party hyperlinks, which is not a bona fide offering of goods or services or any legitimate noncommercial or fair use. Displaying competing hyperlinks may indicate a lack of rights and legitimate interests. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Here, Complainant includes a screenshot of the resolving website with links like, “Tennis Clubs,” “Live Tennis Scores,” and “Sylvano Tennis Academy.” Therefore, the Panel agrees that Respondent has not engaged in any bona fide offering of goods or services or any legitimate noncommercial or fair use.
In Complainant’s Additional Submission, Complainant asserts that Respondent has made only bare assertions of an intended use of the domain name. Demonstrable preparations to use a domain name must be asserted. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”). Additionally, alleged third-party uses of “ATP” in domain names do not establish Respondent’s rights or legitimate interests. See Solvay SA v. Domain Administrator, D2015-1867 (WIPO Jan. 10, 2016) (“The respondent is required to show rights or legitimate interests in order to defend its registration of a domain name that incorporates a trade mark. This, the Respondent has failed to do. Merely citing examples of other third party domain names incorporating famous trade marks (e.g., <phillips66.com>) co-existing with domain name registrations of the rights owners (<philips.com>), does nothing to aid the Respondent’s case.”). Therefore, the Panel agrees that Respondent has failed to meet its prima facie burden under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent registered and used <atptennisacademy.com> in bad faith. First, Complainant argues that Respondent attempted to sell the domain name to Complainant for an amount in excess of out-of-pocket costs, in direct violation of Policy ¶ 4(b)(i). Offers for sale by a respondent to a complainant may indicate bad faith under Policy ¶ 4(b)(i). See Deutsche Bank AG v. Bruckner, D2000-0277 (WIPO May 30, 2000) (finding that the name was registered in bad faith because of the short time frame between the respondent’s registration and the unsolicited offer of sale to the complainant). Here, Respondent allegedly reached out to Complainant within one week after registering the domain name, subsequently asking for $5,000 plus tickets to a tennis tournament which can be as much as $930 per ticket. The Panel therefore agrees that Respondent has engaged in bad faith under Policy ¶ 4(b)(i).
In Complainant’s Additional Submission, Complainant notes that on February 21, 2017, Respondent registered another ATP-formative domain name in an attempt to extort a settlement in this case. Complainant has provided correspondence demonstrating an intent to use the newly registered domain as a bargaining chip, constituting further evidence of bad faith under Policy ¶ 4(b)(ii). Policy ¶ 4(b)(ii) is found where a distinct pattern is present where a respondent is clearly targeting a complainant and its marks, or has a demonstrable habit of registering third party marks in domain names. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”). The Panel agrees that through registration of <atptourtennisacademy.com>, Respondent has taken an additional step in targeting Complainant through domain name registrations and has therefore engaged in a bad faith pattern pursuant to Policy ¶ 4(b)(ii).
Further, Complainant argues that resolution to competing hyperlinks disrupts Complainant’s legitimate business under Policy ¶ 4(b)(iii) and Respondent is presumably profiting from this use, imputing Policy ¶ 4(b)(iv) bad faith. Competing hyperlinks has been seen as bad faith under both prongs. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant’s Exhibit 8 shows several hyperlinks presumably leading to competitors of Complainant, and from which Respondent likely profits. The Panel therefore agrees that Respondent’s use implicates both Policy ¶¶ 4(b)(iii) and (iv).
Lastly, Complainant asserts that, given Complainant’s longstanding registrations of its ATP mark and worldwide recognition, Respondent had actual knowledge of Complainant and its rights in the ATP when registering and using the domain name, demonstrating bad faith under Policy ¶ 4(a)(iii). Panels look to the terms of domain names that are registered, purported fame of an associated complainant’s mark(s), as well as use made of domain names in determining actual knowledge. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Accordingly, the Panel agrees that the weight of the evidence indicates that Respondent knew of Complainant when registering and using the domain name under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <atptennisacademy.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 14, 2017
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