Steiner Sports Marketing, Inc. v. domains Ventures
Claim Number: FA0603000659767
Complainant is Steiner Sports Marketing, Inc. (“Complainant”), represented by Barry L. Mendelson, 14 Fairway Drive, Mamaroneck, NY 10543. Respondent is domains Ventures (“Respondent”), 136 Xiaouxe Road, Xiamen, Fujian 361001, China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <stienersports.com>, registered with Moniker Online Services, Inc.
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.
Louis E. Condon, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 13, 2006.
On March 15, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <stienersports.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 March 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 11, 2006 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@stienersports.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <stienersports.com> domain name is confusingly similar to Complainant’s STEINER SPORTS mark.
2. Respondent does not have any rights or legitimate interests in the <stienersports.com> domain name.
3. Respondent registered and used the <stienersports.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Steiner Sports Marketing, Inc., is engaged in the sale of hand-signed collectibles and marketing services in the sports and entertainment fields. Complainant has used the STEINER SPORTS mark continuously in connection with its business since 1987. On February 12, 1997, Complainant registered the <steinersports.com> domain name. Complainant operates a website under the <steinersports.com> domain name that serves as an important part of Complainant’s business. Complainant asserts that this website receives over 1,000,000 page views per month and generated over $3,500,000 in revenue in 2005.
Respondent registered the <stienersports.com> domain name on September 13, 2003. Internet users who access this domain name are directed to a generic search-engine website that features links to other websites offering products and services unrelated to Complainant’s business.
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."
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.”).
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 asserts that the STEINER SPORTS mark has acquired sufficient secondary meaning to establish common law rights based on Complainant’s use of the mark in connection with its business. Complainant has operated under the STEINER SPORTS mark since 1987 in connection with its business, and has maintained an Internet presence using the <steinersports.com> domain name since 1997. The Panel determines that Complainant has established secondary meaning in the STEINER SPORTS mark for the purpose of demonstrating common law rights in the mark pursuant to Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s <stienersports.com> domain name incorporates Complainant’s STEINER SPORTS mark in its entirety, with the removal of the space between the terms, the letters “i” and “e” transposed and the addition of the top-level domain “.com.” Because spaces are not allowed in domain names, the removal of the space between the terms in Complainant’s mark does not distinguish the disputed domain name from Complainant’s mark. Likewise, because top-level domains are required in all domain names, the addition of “.com” to Complainant’s mark fails to distinguish Respondent’s domain name from the mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> 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”). Additionally, transposing two letters in Complainant’s mark does not negate the confusing similarity of Respondent’s domain name to Complainant’s mark. See Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). Complainant has presented a prima facie case, and the Panel will consider whether the evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent’s <stienersports.com> domain name is confusingly similar to Complainant’s STEINER SPORTS mark. Internet users who access this domain name are directed to a generic search-engine website featuring links to products and services unrelated to Complainant’s business. The Panel presumes Respondent receives click-through fees in exchange for diverting Internet users to these other websites. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
There is no evidence on record that Respondent has ever been commonly known by the <stienersports.com> domain name, or that Respondent is affiliated with Complainant. Furthermore, the WHOIS database contains no information implying that Respondent is commonly known by the <stienersports.com> domain name. The Panel finds that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <stienersports.com> domain
name, which is confusingly similar to Complainant’s STEINER SPORTS mark, to
present Internet users with links to products and services unrelated to
Complainant. Respondent most likely
receives click-through fees in return for directing Internet users to other
websites. Such use of the disputed
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website).
Moreover, because Respondent switches the order of two
letters in Complainant’s mark, Respondent’s registration of the disputed domain
name is a clear attempt to capitalize on typographical errors, and may confuse
Internet users about the relationship between Complainant and the contents of
Respondent’s website. Use of a
typosquatted version of Complainant’s mark is further evidence of bad faith
registration and use under Policy ¶ 4(a)(iii).
See Sony Kabushiki v.
Zuccarini, FA 114714 (Nat. Arb. Forum Aug. 8,
2002) (finding the <sonysytle.com> domain name was registered as a form
of typosquatting to take advantage of the complainant’s SONY STYLE mark, which
was evidence that the domain name was registered and used in bad faith); see
also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011
(WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words
with [the] intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <stienersports.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 1, 2006
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