ATP Tour, Inc. v. Mario Simonaitis
Claim Number: FA1702001719415
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 <atptourtennisacademy.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 28, 2017; the Forum received payment on February 28, 2017.
On February 28, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <atptourtennisacademy.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 March 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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@atptourtennisacademy.com. Also on March 1, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 30, 2017, 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 registered its ATP TOUR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 1,635,368, registered Feb. 19, 1991), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 7. Respondent’s <atptourtennisacademy.com> domain name is confusingly similar to Complainant’s ATP TOUR mark because it incorporates the mark in its entirety, less the space, adding only the generic terms “tennis” and “academy” and the non-distinguishing general top level domain (gTLD) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Ex. B (WHOIS information). Further, Respondent has used the domain name to redirect users to a website featuring sponsored-link advertisements directly related to Complainant’s business. See Compl. at Attached Ex. 8 (hyperlinks include “Tennis Drills for Coaches” and “Worst Exercise For Aging”). Such uses cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Additionally, Respondent has registered the <atptourtennisacademy.com> with the explicit intention of transferring it to Complainant in an attempt to coerce a settlement in a separate UDRP proceeding.
Respondent has registered and is using the <atptourtennisacademy.com> domain name in bad faith. Respondent has registered the domain name for the purpose of selling it to Complainant for valuable consideration in excess of its out-of-pocket costs directly related to the domain name either as an explicit offer to sell under Policy ¶ 4(b)(i) or as a coercion tactic. See Compl., at Attached Ex. 9 (email correspondence). This is the second UDRP complaint Complainant has filed against Respondent, which demonstrates an emerging pattern of bad faith under Policy ¶ 4(b)(ii). See Compl., at Attached Ex. 10 (email correspondence concerning the subject of the other UDRP complaint, <atptennisacademy.com>); ATP Tour, Inc. v. Mario Simonaitis, FA 1715481 (Forum Mar. 14, 2017) (ordering transfer). Further, Respondent has also aimed to disrupt Complainant’s business under Policy ¶ 4(b)(iii) by incorporating sponsored-link advertisements for directly competing tennis services. See Compl., at Attached Ex. 8. Moreover, Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the ATP mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant under Policy ¶ 4(b)(iv). Finally, Respondent admitted to having actual knowledge of Complainant’s rights in Complainant’s marks by contacting Complainant with an offer to sell—indicating bad faith registration and use under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company and the governing body of the worldwide men’s professional tennis circuit.
2. Complainant has established its trademark rights to the ATP TOUR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 1,635,368, registered Feb. 19, 1991), and has rights in the mark under Policy ¶ 4(a)(i).
3. Respondent registered the disputed domain name on February 21, 2017.
4. Respondent has used the domain name to redirect users to a website featuring sponsored-link advertisements directly related to Complainant’s business and has attempted to sell the domain name to Complainant.
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(f), 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 (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 question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it registered its ATP TOUR mark with the USTPO (Reg. 1,635,368, registered Feb. 19, 1991), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 7. The Panel accepts that evidence. A USPTO registration confers rights in a mark. 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 United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the ATP TOUR mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ATP TOUR mark .Complainant argues that Respondent’s <atptourtennisacademy.com> domain name is confusingly similar to the ATP TOUR mark and the Panel accepts that argument. The Panel agrees that the domain name differs from the mark by appending the generic terms “tennis” and “academy” and the gTLD “.com.” to the fully incorporated ATP TOUR mark. Such alterations have not been considered distinguishing under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). As such, the Panel holds that the <atptourtennisacademy.com> domain name is confusingly similar to Complainant’s ATP TOUR mark under 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 (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.”).
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 ATP TOUR mark and has used it in its entirety in the domain name, adding only the generic words “tennis” and “academy”;
(b) Respondent has used the domain name to redirect users to a website featuring sponsored-link advertisements directly related to Complainant’s business and has attempted to sell the domain name to Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its ATP TOUR mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum) Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel notes that the <atptourtennisacademy.com> domain name WHOIS information lists “MARIO SIMONAITIS” as the registrant. See Compl., at Attached Ex. B. Therefore, the Panel holds that the Respondent is not commonly known by the <atptourtennisacademy.com> domain name;
(e) Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent is using the resolving website in a competitive manner or to conjure a false association with Complainant. The Panel accepts that submission and the evidence adduced in its support. Attempts to compete with a complainant, presumably for commercial gain, may not evince rights or legitimate interests. See CheapCaribbean.com,Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”) Here, Complainant provided extensive and persuasive evidence of Respondent’s use of competing hyperlinks on the resolving website at Attached Exhibit 8. Hyperlinks include: “Tennis Drills for Coaches” and “Worst Exercise For Aging.” Compl., at Attached Ex. 8. Accordingly, the Panel finds that this evidence supports a finding that Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii);
(f) Complainant submits that Respondent has registered the <atptourtennisacademy.com> domain name with the explicit intention of transferring it to Complainant for more than out-of-pocket expenses or to coerce a settlement in a separate UDRP proceeding. The Panel notes that on January 26, 2017, Respondent offered to sell the <atptennisacademy.com> domain name for $5000 and roughly $5,500 in tickets to a tournament Complainant is associated with. See Compl., at Attached Ex. 10. Notably, <atptennisacademy.com> was the subject of a recent UDRP dispute between Complainant and Respondent. See ATP Tour, Inc. v. Mario Simonaitis, FA 1715481 (Forum Mar. 14, 2017) (ordering transfer). A respondent’s offer to sell a domain name to a complainant for excess out-of-pocket costs is evidence that the respondent lacks legitimate interests in the disputed domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name). Complainant is suggesting (while <atptourtennisacademy.com> was registered by Respondent on February 21, 2017) Respondent’s correspondence relating to <atptennisacademy.com> should be considered as having a common nexus with the current dispute. Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the <atptourtennisacademy.com> domain name under Policy ¶ 4(a)(ii).
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 contends that Respondent registered and used the <atptourtennisacademy.com> domain name in bad faith under Policy ¶ 4(b)(i). A domain name has been registered in bad faith when it is more likely than not that Respondent understood that it could benefit from the resale of a domain name that is identical with complainant’s trademark. See Rackspace US, Inc. v. Russell Harrower, FA1411001592005 (Forum Jan. 5, 2014) (“The Panel concurs with this line of reasoning, which is complemented by Respondent’s prompot[sic] offer to sell the domain name to the Complainant within hours of the registration for the amount of $5000 USD. This allows for a finding of bad faith under Policy ¶ 4(b)(i), as it is more likely than not that Respondent understood that it could benefit from the resale of a domain name that is identical with the Complainant’s trademark.”). The Panel notes that Complainant has included correspondence from Respondent demonstrating offers to sell the <atptennisacademy> domain name in exchange for $5000 and six tickets to a tennis tournament valuing roughly $5,500. See Compl. at Attached Ex. 10. Complainant alleges, “One day after registering the Domain Name, Respondent offered to transfer it to ATP as a way to coerce a settlement in a separate UDRP proceeding.” Compl., ¶ 27. The Panel finds on all the evidence that Respondent acted in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant next contends that Respondent has a history and pattern of bad-faith conduct because this is allegedly the second complaint filed by Complainant against respondent. Where a history of bad faith decisions against a respondent exists, there is a presumption that a subsequent UDRP dispute is a part of a pattern of bad faith domain name registrations under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). The Panel notes the previous UDRP dispute reference by Complainant was pending at the time of the filing of the Complaint, but has since been decided in Complainant’s favor. See ATP Tour, Inc. v. Mario Simonaitis, FA 1715481 (Forum Mar. 14, 2017) (ordering transfer). Accordingly, the Panel agrees that Respondent has a marked history of bad faith conduct warranting a finding of Policy ¶ 4(b)(ii) bad faith.
Thirdly, Complainant submits that Respondent is disrupting its business by attempting to divert potential customers away from Complainant to third-party websites linked to the website. A Respondent disrupts a Complainant’s business and therefore shows bad faith under Policy ¶ 4(b)(iii) when the disputed domain name’s resolving website displays links to Complainant’s competitors. 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).”). As such, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Fourthly, Complainant argues that Respondent has registered and is using the <atptourtennisacademy.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the ATP and ATP TOUR marks. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends that the <atptourtennisacademy.com> domain name creates confusion as to the source, sponsorship, affiliation, or endorsement of its website for the purpose of attracting Internet traffic and commercial benefit through click-through ads. See Compl., at Attached Ex. 8. As such, the Panel concludes that Respondent created a likelihood of confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Fifthly, Complainant contends that bad faith is further shown by Respondent’s actual knowledge of Complainant’s rights in the ATP TOUR mark. Complainant argues that the fame of its mark, Respondent’s use of a confusingly similar version of Complainant’s ATP TOUR marks, and Respondent’s emails to Complainant offering sale of domain names are all evidence of actual knowledge. Actual knowledge of Complainant’s rights to a mark is sufficient to prove bad faith registration under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, the Panel concludes that Respondent acted 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 domain name using the ATP TOUR mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name 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 <atptourtennisacademy.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 31, 2017
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