United States Polo Association v. Chris Co.,
Inc. c/o Chris Lipper
Claim Number: FA0606000729193
PARTIES
Complainant is United States Polo Association (“Complainant”), represented by Gerald J. Ferguson, of Baker & Hostetler LLP, 666 Fifth Avenue, New York, NY 10103. Respondent is Chris Co., Inc. c/o Chris Lipper (“Respondent”), 35 Buckley Hill Road, Morristown, NJ 07960.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <uspoloassn.org>,
<uspoloassn.net> and <uspoloassn.info>, registered with Register.Com, Inc.
PANEL
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 8, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 12, 2006.
On June 9, 2006, Register.Com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <uspoloassn.org>,
<uspoloassn.net> and <uspoloassn.info> domain names
are registered with Register.Com, Inc. and that the Respondent is the current
registrant of the names. Register.Com,
Inc. has verified that Respondent is bound by the Register.Com, 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 June 14, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 5, 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@uspoloassn.org, postmaster@uspoloassn.net and
postmaster@uspoloassn.info by e-mail.
A Response was received in electronic copy on July 5, 2006 but
determined to be deficient because it was not received in hard copy. Respondent submitted a hard copy on July 7,
2006, two days after the deadline for Response.
On July 7, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Sandra J. Franklin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <uspoloassn.org>, <uspoloassn.net> and <uspoloassn.info> domain names are confusingly similar to Complainant’s U.S. POLO ASSN. mark.
2. Respondent does not have any rights or legitimate interests in the <uspoloassn.org>, <uspoloassn.net> and <uspoloassn.info> domain names.
3. Respondent registered and used the <uspoloassn.org>, <uspoloassn.net> and <uspoloassn.info> domain names in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
FINDINGS
The United States Polo Association was
established in 1890 and Complainant has been using the mark UNITED STATES POLO
ASSOCIATION since at least 1924 to identify the not-for-profit organization. Complainant has various trademark
registrations pertaining to the organization, including registrations for the
UNITED STATES POLO ASSOCIATION and U.S. POLO ASSN marks. The domain name <uspoloassn.com> was
transferred from Respondent to Complainant in a previous National
Arbitration Forum case.
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.
This Panel finds Respondent’s response deficient
and therefore declines to consider it, and will look to the Complaint for
sufficient proof of the three required elements. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (without an
adequate timely filed response, all reasonable inferences of fact in the
allegations of the complaint will be taken as true).
Complainant has registered the U.S.
POLO ASSN. mark with the United States Patent and Trademark Office (Reg. No.
2,908,391 issued December 7, 2004; Reg. No. 2,991,639 issued September 6,
2005). As a result of Complainant’s
registration of the U.S. POLO ASSN. mark before Respondent registered the
disputed domain names on January 2, 2006, the Panel finds that Complainant has
established rights in the mark pursuant to Policy ¶ 4(a)(i). See Intel Corporation v. Macare, FA
660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had
established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering the marks with the USPTO); see also Morgan Stanley v. Fitz-James
(CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005)
(“The Panel finds from a preponderance of the evidence that Complainant has
registered its mark with national trademark authorities. The Panel has
determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes
of Policy ¶ 4(a)(i).”).
The Panel
finds that Respondent’s <uspoloassn.org>, <uspoloassn.net>
and <uspoloassn.info> domain names are identical to Complainant’s
U.S. POLO ASSN. mark because each contains the entire registered mark and
merely eliminates the periods and spaces in the mark. The elimination of punctuation and spaces does not distinguish
the disputed domain names from Complainant’s mark and instead renders them
confusingly similar to the U.S. POLO ASSN. mark pursuant to Policy ¶
4(a)(i). See Tech.
Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding
that the domain name <radioshack.net> is identical to the complainant’s
mark, RADIO SHACK); see also Mrs. World Pageants, Inc. v. Crown Promotions,
FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not
significant in determining the similarity of a domain name and mark).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”)
Complainant notes the WHOIS
information lists “Chris Co., Inc. c/o Chris Lipper” as the registrant of the
domain names, and there is no other evidence in the record indicating that
Respondent is commonly known by the disputed domain names. Complainant has not authorized or licensed
Respondent to register or use domain names incorporating Complainant’s U.S.
POLO ASSN. mark or any variation. See
Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark).
The <uspoloassn.org>, <uspoloassn.net>
and <uspoloassn.info> domain names each resolve to Respondent’s
website, which subject visitors to pop up advertisements. The Panel finds that Respondent is
commercially benefiting from redirecting Internet users to its website, presumably
by earning “click-through” or other advertisement fees, and that this use is
not a bona fide offering of goods or services under Policy ¶
4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Pioneer Hi-Bred Int’l Inc.
v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the
respondent did not have rights or legitimate interests in a domain name that
used the complainant’s mark and redirected Internet users to a website that
pays domain name registrants for referring those users to its search engine and
pop-up advertisements); see also Disney Enters., Inc. v. Dot Stop, FA
145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s
diversionary use of the complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names).
Upon Complainant’s information and belief,
Respondent apparently registered the disputed domain names because one of
Complainant’s licensees, Jordache. Ltd., owed Respondent money. Because Respondent is not a licensed product
reseller or authorized distributor of Complainant’s products but only a vendor
for one of Complainant’s licensees, the Panel concludes that Respondent has no
rights or legitimate interests in the disputed domain names and had no
authority from Complainant to register them.
See Hewlett-Packard Co. v.
Burgar, FA 93564 (Nat. Arb. Forum Apr. 10, 2000) (finding that the
respondent has no rights or legitimate interests in the
<hewlettpackard.com> domain name, because the respondent is not a
licensed dealer of Hewlett-Packard products and has not demonstrated any right
except to declare that he is affiliated with a licensed re-seller of the
complainant’s products); see also K&N Eng’g, Inc. v. Weinberger, FA
114414 (Nat. Arb. Forum July 25, 2002) (holding that the respondent, who was
not an authorized distributor of the complainant’s products, lacked rights or
legitimate interests in a domain name incorporating the complainant’s mark).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant states that in a reply
e-mail, Respondent told Complainant, “Very few people know that I have the
sites and I am willing to quietly work something out at a fair market
value.” Complainant also asserts that
Respondent registered the disputed domain names for the bad faith purpose of
extorting money from one of Complainant’s licensees, Jordache Ltd. Complainant provides evidence of an e-mail
Respondent sent to Complainant in which Respondent states, “If your licensee,
Jordache, was kind enough to have responded to any of my voice mails or e-mails
regarding money owed for US Polo products purchased from me we would not be in
the position we are in now.” The Panel
therefore finds that Respondent’s comments offering to sell the disputed domain
name registrations to Complainant and extort money from Complainant’s licensee indicate
that Respondent registered and used the domain names in bad faith in accordance
with Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain
name, even if no certain price is demanded, are evidence of bad faith”.)
Furthermore, Complainant
previously filed a Complaint against Respondent with the National Arbitration
Forum concerning the <uspoloassn.com> domain name, and that the panel in
that case awarded Complainant the domain name.
See United States Polo Ass’n v. Chris Co., Inc., FA 640248 (Nat. Arb. Forum Mar. 28, 2006) (transferring the
<uspoloassn.com> domain name to Complainant from Respondent). Respondent’s subsequent registration of the
<uspoloassn.org>, <uspoloassn.net> and <uspoloassn.info> domain names demonstrates a pattern of preventing Complainant from
reflecting its U.S. POLO ASSN. mark in domain names, and shows bad faith
registration and use pursuant to Policy ¶ 4(b)(ii). See Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO
Dec. 10, 2004)(“[Respondent] registered the <usgames.com> domain name in
order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a
corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established,
inter alia, by the public decisions of two different UDRP proceedings [against]
Respondent.”); see also Harcourt,
Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (“Registration of
more than one domain name that infringes on another’s registered mark(s)
supports the inference that Respondent knew of Complainant’s marks upon
registering the domain names . . . [and t]he registration
of multiple domain names that infringe on Complainant’s trademarks is evidence
of a pattern of conduct.”)
Respondent is also taking advantage of the confusing
similarity between the domain names and Complainant’s mark in order to profit
from the goodwill associated with the mark in violation of Policy ¶
4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat.
Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the
domain name to another domain name, <iwin.com>, presumably receiving a
portion of the advertising revenue from the site by directing Internet traffic
there, thus using a domain name to attract Internet users for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <uspoloassn.org>,
<uspoloassn.net> and <uspoloassn.info>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 25, 2006
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