DECISION

 

USA Triathlon v. Proto Web Co.

Claim Number: FA0308000190643

 

PARTIES

Complainant is USA Triathlon, (“Complainant”) represented by Diane Duhaime of Jorden Burt LLP, 175 Powder Forest Drive, Suite 201, Simsbury, CT 06089 and Markham R. Leventhal of Jorden Burt LLP, 777 Brickell Avenue, Suite 500, Miami, FL 33131.  Respondent is Proto Web Co., (“Respondent”) represented by Ari Goldberger of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <<usatriathlon.com>>, registered with The Registry At Info Avenue d/b/a IA Registry (hereinafter “IA Registry”).

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

            Jeffrey M. Samuels, Chair

            Hon. Carolyn Marks Johnson

            David H. Bernstein

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 28, 2003; the Forum received a hard copy of the Complaint on August 29, 2003.

 

On September 2, 2003, IA Registry confirmed by e-mail to the Forum that the domain name <<usatriathlon.com>> is registered with IA Registry and that the Respondent is the current registrant of the name. IA Registry has verified that Respondent is bound by the IA Registry registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 24, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@<usatriathlon.com> by e-mail.

 

A timely Response was received and determined to be complete on October 14, 2003.

 

A timely Additional Submission was submitted on behalf of Complainant on October 20, 2003.  Respondent submitted an Additional Submission one day after the deadline for its submission. While such submission is not in compliance with the Forum’s Supplemental Rule 7, the Panel, in the exercise of its discretion[1], has considered its contents in its determination of this matter.

 

On November 3, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Jeffrey M. Samuels, the Honorable Carolyn Marks Johnson, and David H. Bernstein as Panelists.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant USA Triathlon is a national sports organization and the sole organizational member of the United States Olympic Committee authorized to represent the Olympic Sport of Triathlon within the U.S. USA Triathlon is the National Governing Body (NGB) in the U.S. for the Sport of Triathlon, as defined in the Ted Stevens Olympic and Amateur Sports Act, 36 U.S.C. §220501 et seq.  USA Triathlon arranges, conducts, and sanctions triathlon events, selects national, world, and Olympic triathlon teams, trains and hires triathlon athletes and officials, distributes a monthly newsletter on the subject of triathlon, participates in trade shows to promote the sport of triathlon, and oversees ten (10) regional triathlon federations in the U.S.

 

Complainant alleges that it has used the mark USA TRIATHLON on or in connection with a variety of goods and services since 1996 and that, since March 1996, it has promoted its goods and services at its <usatriathlon.org> website.  Complainant also owns the domain name <usatriathlon.net>.

 

According to the Complaint, on or about July 19, 2001, Vertical Axis, Inc. registered the disputed domain name <<usatriathlon.com>>.  The domain name apparently was transferred to Respondent Proto Web Co. on February 14, 2003.

 

Complainant contends that Respondent’s <usatriathlon.com> domain name is confusingly similar to Complainant’s USA TRIATHLON mark as it merely eliminates the space between the words “USA” and “TRIATHLON.”

 

Complainant also alleges that Respondent should be considered as having no rights or legitimate interests in the domain name.  It contends that Respondent has never commonly been known by the name ‘USA Triathlon” and that Respondent is not making a legitimate noncommercial or fair use of the domain name.

 

With respect to the issue of “bad faith” registration and use, Complainant maintains that Respondent registered the domain name <usatriathlon.com> to prevent Complainant from using the mark and that Respondent has engaged in a pattern of such conduct.  Complainant cites three previous UDRP panel decisions[2] in which Vertical Axis was found to have registered marks with bad faith. Upon information and belief, Complainant asserts that Respondent and Vertical Axis are one and the same entity or alter egos under common ownership and control.[3]

 

Complainant further argues that Respondent has registered the domain name in dispute primarily for the purpose of intentionally attempting to attract, for commercial gain, internet users to Respondent’s <usatriathlon.com> website by creating a likelihood of confusion with Complainant’s USA TRIATHLON mark as to the source, sponsorship, affiliation, and endorsement of the products to which there are links and ads at Respondent’s website. In support of such assertion, Complainant observes that the term www.usatriathlon.com is prominently presented at the top of the web page at Respondent’s <usatriathlon.com> website, that the first topic at Respondent’s website is “Triathlon,” and that Respondent’s website links to other sites and contains static, pop-up and pop-under ads for various items.  See Exhibit I to Complaint.

 

B. Respondent

 

Respondent, after stipulating that it is a subsidiary of Vertical Axis, Inc., argues that “the Complaint must be dismissed because [Complainant] has no enforceable trademark rights to the term `USA Triathlon’.” Respondent points out that Complainant filed two trademark applications (Serial Nos. 78/167406 and 78/167453) with the United States Patent and Trademark Office (“USPTO”) seeking registration for USA TRIATHLON and DESIGN as used on printed matter and clothing.  With respect to the ‘406 application, the Examiner, in an initial Office action, required Complainant to disclaim the descriptive wording “USA TRIATHLON” on grounds it is “merely descriptive of the event featured by the goods and the geographic origin of the featured event.”[4]  According to Respondent, Complainant’s alleged mark is composed of a generic term, “triathlon,” modified by the geographically descriptive term, “USA,” and that such terms provide no rights in domain name proceedings.

 

Respondent further argues that, given that USA TRIATHLON is a generic or geographically descriptive term, Respondent, ipso facto, has rights and legitimate interests in the disputed domain. Moreover, Respondent adds, prior to the initiation of this dispute, it used the domain name <usatriathlon.com> in connection with advertising services relating to the sport of triathlon.  “The use of a descriptive term domain name in connection with third party advertising services related to the descriptive meaning of the domain name constitutes use in connection with a bona fide offering of goods or services,” Respondent asserts.

 

In response to Complainant’s argument that Respondent intentionally attempted to attract users for commercial gain, Respondent argues that where a complainant’s mark is a descriptive or generic term, a complainant must offer evidence that respondent has specifically intended to confuse consumers seeking out complainant and that “[t]here is no such proof here.”

 

According to Respondent, Complainant brought this matter in bad faith and is guilty of “reverse domain name hijacking.”  In support of this argument, Respondent maintains that Complainant knows its Complaint is without merit because it is based on an alleged mark which is composed of either a generic or descriptive term and that Complainant concealed from this Panel the fact that its applications to register the USA TRIATHLON and DESIGN mark had been initially refused by the USPTO.

 

C. Complainant’s Additional Submission[5]

 

In its Additional Submission, Complainant contends that USA TRIATHLON is at least descriptive, if not suggestive.  It then notes that descriptive terms are protectable under U.S. trademark law if they have acquired distinctiveness or secondary meaning. 

 

Complainant argues that its mark USA TRIATHLON has acquired distinctiveness through its “continuous, widespread and exclusive” use in commerce on or in connection various goods and/or services.  In support of this argument, Complainant points to the mark’s use in commerce since 1996 through the promotion of goods and services at its <usatriathlon.org> website, recognition by federal statute as the only NGB for the sport of triathlon, international recognition as the sole representative of the U.S. to the International Triathlon Union, membership totaling more than 47,000, recognition as the NGB in national media publications, and participation in international triathlon events, seminars, training camps, and trade shows.

 

Complainant rejects Respondent’s contention that Respondent uses the <usatriathlon.com> domain name in connection with internet advertising that relates to the sport of triathlon and, therefore, is engaged in a bona fide offering of goods or services.  Respondent did not use the domain name in connection with a bona fide offering of goods or services either before or after the complaint was filed, Complainant asserts.  According to Complainant, before the complaint was filed, the website contained no original content, prominently displayed the term “www.usatriathlon.com” at the top of the webpage and provided links to other websites containing static pop-up and pop-under ads.  At some point, Complainant notes, the website was modified to provide a few links to other websites offering triathlon and other sports equipment.

 

Complainant further argues that Proto Web’s reverse domain name hijacking claim is without merit. While Complainant “apologizes” for its failure to disclose its pending trademark applications and their current status, it emphasizes that, contrary to Respondent’s suggestion, there has been no dispositive determination by the USPTO that USA TRIATHLON is not protectable, inasmuch as a first Office action is a non-final, preliminary action.  It then points out that it submitted to the USPTO a claim of acquired distinctiveness for the term “USA TRIATHLON.”  See Exhibit C to Additional Submission.

 

D.    Respondent’s Additional Submission

 

 In its Additional Submission, Respondent contends that while Complainant has argued that USA TRIATHLON has acquired distinctiveness, it is undisputed that the USPTO has deemed the mark geographically descriptive and not entitled to registration.  Moreover, Respondent adds, there is no evidence that the mark had acquired distinctiveness at the time the disputed domain name was registered.  Finally, Respondent maintains that there is “not a shred of evidence” that it knew of Complainant or its alleged mark at the time the domain name was registered and that, absent such knowledge, it is impossible to prove bad faith registration.    

 

FINDINGS

Upon careful review of all the evidence, the Panel concludes that the domain name in dispute is confusingly similar to a mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name, and that the domain name was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

Identical and/or Confusingly Similar

 

There appears to be no dispute that the domain name <usatriathlon.com> is confusingly similar, if not legally identical, to USA TRIATHLON.  The Panel notes that spaces are not permitted in domain names and finds that the inclusion of the generic top-level domain “com” is not entitled to any weight.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (hannoverre.com found to be identical to HANNOVER.RE “as spaces are impermissible in domain names and a generic top-level domain such as `.com’ or `.net’ is required in domain names.”)

 

The parties do, however, dispute the issue of whether Complainant has rights in the term USA TRIATHLON.  As noted above, while Complainant contends that such term has acquired distinctiveness and, thus, is protectable, Respondent, relying on the actions of the USPTO in initially refusing to register USA TRIATHLON and DESIGN, argues that Complainant has no rights in the term.

 

Though this is a close question, the Panel finds, by a preponderance of the evidence, that Complainant’s use of the USA TRIATHLON mark for the past seven years supports a determination that the mark has acquired the requisite secondary meaning.  The Panel refers to Complainant’s August 25, 2003, response to the USPTO Office Action[6] which includes a sworn affidavit from the executive director of USA Triathlon, Steven Locke. In his affidavit, Mr. Locke avers that, since on or before February 26, 1996, USA Triathlon has “exclusively, continuously and on a widespread basis used and promoted the USA TRIATHLON mark in commerce with its goods and services.”  In the view of the Panel, such evidence is sufficient to establish the required secondary meaning to render USA TRIATHLON protectable.

 

The Panel’s decision on this issue is supported by various third-party registrations issued by the USPTO.  For example, the USPTO has registered the marks USA SOFTBALL (Reg. No. 2319625), USA TENNIS (Reg. No. 2186929), and USA SWIMMING (Reg. No. 2090608), as used on or in connection with a wide variety of goods and/or services. Each registration was issued under Section 2(f) of the Lanham Act, that is, based on proof of acquired distinctiveness, and without a requirement to disclaim any portion of the mark.  While such registrations are not binding in this proceeding, they provide the Panel some comfort in its determination that Complainant has rights in the USA TRIATHLON mark.

 

Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

The Panel concludes that Respondent has no rights or legitimate interests in the domain name.  Given our ruling on the issue of whether Complainant has rights in the USA

TRIATHLON mark, Respondent’s argument that it, ipso facto, has rights or legitimate interests in the domain name must be rejected.

 

Further, as noted in Harvey Casino Resorts and other cases[7], the use of a domain name that is confusingly similar to a complainant’s mark in order to attract internet users to an advertising website is not considered to be in connection with a bona fide offering of goods or services, pursuant to paragraph 4(c)(1) of the Policy, and is not considered to be a legitimate noncommercial and fair use under paragraph 4(c)(iii) of the Policy.  While Respondent’s <usatriathlon.com> website currently contains links to sites selling triathlon supplies, the site also contains many links to material unrelated to sports. Triathlon supplies are only, at most, 1/30^th of the sports material on the site. Thus, we conclude that the current site[8] supports a determination that Respondent does not have rights or legitimate interests in the domain name.

 

Registration and Use in Bad Faith

 

Finally, the Panel concludes that the domain name in issue was registered and is being

used in bad faith. More specifically, the Panel determines that, by using the <usatriathlon.com> domain name, Respondent intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the site, within the meaning of paragraph 4(b)(iv) of the Policy.  The Panel rejects Respondent’s assertion that it may not be charged with knowledge of Complainant’s mark at the time the domain name was registered.[9] The evidence establishes that Complainant changed its corporate name to “USA Triathlon” and began using the USA TRIATHLON mark in February 1996, over five (5) years before the domain name in issue was registered.[10] 

 

The Panel agrees with Complainant that Respondent Proto Web uses the <usatriathlon.com> domain name to divert USA Triathlon customers to Respondent’s website which contains links to pop up ads and other commercial sites offering sporting equipment, including that associated with the sport of triathlon.  Under such circumstances, and given the strong similarity between the domain name and Complainant’s mark, internet users are likely to be confused as to the source, sponsorship, affiliation, or endorsement of the website or of the products advertised on the website.

 

            Reverse Domain Name Hijacking

 

Based on the facts of this case, we are unable to conclude that Complainant has used the Policy in “bad faith” to attempt to deprive Respondent of the domain name in dispute. We, thus, reject Respondent’s claim of reverse domain name hijacking.

 

In reaching our decision, we note that Complainant has been found entitled to transfer of the domain name and that the nondisclosure related to a non-final Office action.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <<usatriathlon.com>> domain name be TRANSFERRED from Respondent to Complainant.

 

                                               

       Jeffrey M. Samuels, Chair

Hon. Carolyn Marks Johnson

David H. Bernstein

Panelists

 

                                                                 

            Dated: November 17, 2003

 

 

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