TeamShiffrin, LLC v. Ray Leal
Claim Number: FA1802001771643
Complainant is TeamShiffrin, LLC (“Complainant”), represented by Douglas Griess of Hackstaff & Snow, LLC, Colorado, USA. Respondent is Ray Leal (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abfttb.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Natalia Stetsenko as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2018; the Forum received payment on February 12, 2018.
On February 13, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <abfttb.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 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2018 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@abfttb.com. Also on February 14, 2018, 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 March 5, 2018.
On March 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed
Natalia Stetsenko 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 engages in the sale of helmets, hats, gloves, and tank tops. In the future, Complainant intends to sell other goods such as stickers, ski boots, ski jackets, and sports equipment. Complainant has rights in the ABFTTB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,355,349, registered Dec. 12, 2017). See Compl. Ex. A. Respondent’s <abfttb.com> domain name is identical to Complainant’s federally registered mark.
Respondent has no rights or legitimate interests in the <abfttb.com> domain name. Respondent has never been known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent’s only use of the domain name has been to offer to sell the domain name for $250,000 to Complainant or its competitors, and has no intent to use the domain name. See Compl. Ex. E.
Respondent registered and uses the <abfttb.com> domain name in bad faith. Respondent offered to sell the domain name to Complainant for $250,000 in a Response to Complainant’s letter, and stated it would sell the domain name to a third-party should Complainant decline. See Compl. Ex. E.
B. Respondent
Respondent makes no legally relevant arguments pertaining to Policy ¶ 4(a)(i).
Respondent does have rights and legitimate interests in the <abfttb.com> domain name. Respondent registered the domain name with the intention of using it to professionally assist individuals in weight maintenance and proper meal preparation using the ABFTTB acronym, which stands for “Always Be Fit, Train The Body.” Further, Complainant initiated the negotiations to purchase the domain name. See Resp. Annex.
Respondent registered the <abfttb.com> domain name in good faith. Respondent registered the domain name with the intention of using it to professionally assist individuals in weight maintenance and proper meal preparation. Further, both parties have submitted offers to settle this dispute with the other party, which both parties rejected. See Resp. Annex.
The Panel may note that Respondent first registered the <abfttb.com> domain name on January 29, 2018.
Complainant owns the registered trademark “ABFTTB” under the US Registration Number 5,355,349 registered in international classes 9 and 25 on December 12, 2017 (Exhibit A). Complainant originally filed an Intent to Use Application for the Mark with the U.S. Patent and Trademark Office on February 20, 2014 (Exhibit B). Complainant filed its Statement of Use for the Mark On October 12, 2017.
Respondent registered the disputed domain name <ABFTTB.COM> on January 29, 2018.
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 has established legal standing under the UDRP Policy ¶ 4(a)(i) based on its registration of the ABFTTB mark with the USPTO (Reg. No. 5,355,349, registered Dec. 12, 2017). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <abfttb.com> domain name is identical to Complainant’s mark, because it incorporates the registered mark in its entirety merely adding the generic top-level domain (“gTLD”) “.com” suffix. The overwhelming consensus amongst UDRP panels is that similar changes in a registered mark fail to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See 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.”).
Therefore, the Panel finds that Complainant has satisfied the requirements under Policy ¶4(a)(i).
Complainant has shown that Respondent had not been known by the domain name as evidenced by the WHOIS records (the WHOIS identifies “Ray Leal” as the registrant), neither had Complainant authorized Respondent to register the domain name or given Respondent permission to use the mark in any manner. Previous panels found that a respondent was not commonly known by the disputed domain name where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). See also 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).
Further, in confirmation of its assertions that Respondent does not intend to use the infringing domain name except to offer it for sale, Complainant provided a copy of an email from Respondent, reading “Thank you for contacting me. Would TeamShiffrin be interested in purchasing the domain name I currently own. I have had some inquiries. Thank you again.” (Compl. Ex. E). Complainant claims that when it called Respondent, Respondent stated that the purchase price was $250,000. Although no evidence exists to confirm the latter assertion related to the amount, the analysis of correspondence between the parties clearly shows an attempt to sell the disputed domain initiated by Respondent. Previous panels found that offering a confusingly similar domain name for sale can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
Therefore, this Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent, in his turn, asserts having “all rights and legitimate interests in respect of the domain name ABFTTB.com for his new business “Always Be Fit, Train the Body”. Respondent further notes that the domain name was registered on January 29, 2018 “with every intention of using it for a new business in the athletic and body training field.”
Respondent provides no evidence that he has been commonly known by the domain name (as an individual, business, or other organization).
The Panel has to admit though that, given the fact that the domain name was registered just two weeks before the complaint was filed, it is quite natural to expect that one may have no elaborate business plan or promotional materials, etc. to confirm ones intent to use the domain for bona fide offering of goods and services. There is definitely nothing illegitimate in having an idea for a business and securing a domain name for that future business, unless it is done having third party’s rights in mind. For this reason, the Panel believes that the outcome in this case depends on the finding in respect of the third element under the Policy. As noted by the Panel in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227, April 9, 2009 (“… the questions of rights and legitimate interests and bad faith will usually be just the opposite sides of the same coin. If the registrant is found to have a legitimate interest in the use of a domain name for such purpose, then it is not likely to have registered the domain name in bad faith. The converse is also the case.”)
Therefore, the Panel finds that Complainant has satisfied the requirements under Policy ¶ 4(a)(ii).
According to Complainant, the public has been on notice of the Complainant’s claim of ownership of the Mark since December 12, 2017 and the public has been on notice of the Complainant’s intent to use the Mark since February 20, 2014.
Complainant submitted evidence showing that “ABFTTB” has been associated with the international professional skier Mikaela Shiffrin since 2014 when she started skiing wearing the helmet design with the “ABFTTB” Mark on it. This is supported by examples of articles in major media, such as, for example, USA Today, provided in Compl. Exhibit D. Considering this evidence, the Panel finds it important to also take into account the type of the events that are subject to coverage by these publications (the Olympic games) and the attention they attract worldwide; the individual standing behind the mark in question, her worldwide fame and symbolic importance to her country and national sports (both Complainant and Registrant are based in the USA).
Complainant further notes that this association was strengthened when the commercial about Mikaela Shiffrin’s connection to the Mark aired on January 29, 2018 and on February 4, 2018 minutes before the start of the NFL Super Bowl Game. The disputed domain name was registered minutes after the commercial was aired on January 29, which, given the mentioned circumstances (the Olympics and major national sport events are watched by millions, and their attention is focused on their “heros”), is unlikely to be coincidental, especially because “ABFTTB” is not a dictionary term or a generally used acronym.
This Panel finds that the Mark in question was famous among the general public, particularly due to media coverage since 2014. Previous panels found bad faith in cases where Complainant’s name was famous or Respondent had knowledge of the mark. See Cho Yong Pil v. Sinwoo Yoon , WIPO Case No. D2000-0310 (WIPO, June 19, 2000) (The Panel determines that the Respondent has registered the domain name in bad faith because the Complaint’s name was famous at the time of registration of the domain name…). See also Internet Billing Company Ltd. v Fundu Technologies, FA0008000095547 (Forum October 2, 2000) (Respondent’s conduct indicates that the domain name was registered and is being used in bad faith. Under Section 22 of the United States Trademark Act, "Registration of a mark on the principal register…shall be constructive notice of the registrant’s claim of ownership." The fact that Respondent registered the domain name "ibills.com" on the very day that "ibill.com" was granted federal registration status is evidence of both constructive notice and registration in bad faith).
The consensus view among UDRP panels is that mere knowledge of mark, without more, does not establish bad faith registration. In both cited cases there were other circumstances that prompted finding of bad faith (passive holding and pattern of conduct).
The Panel concludes that other circumstances of the present case indicate that Respondent made an attempt to sell the domain. While Respondent asserts that “if Complainant truly believes that Respondent has infringed upon their rights to the domain name they would have come directly to the ICANN without trying to negotiate a settlement”, no evidence on the case record shows that Complainant made unsolicited offers to purchase the domain from Respondent. Just the other way round, the first offer to sell the domain was made by Respondent in his email of February 6, 2018. Given the other circumstances of the case, particularly the attractiveness of a mark associated with a famous athlete, a conclusion can be made that such an offer to sell targets the value of Complainant’s mark.
Previous panels found offering a confusingly similar domain name for sale to be evidence of bad faith registration and use. See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Therefore, the Panel determines that the domain name was registered and used in bad faith. Thus, Complainant has satisfied the requirements under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abfttb.com> domain name be TRANSFERRED from Respondent to Complainant.
Natalia Stetsenko, Panelist
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