SR Holdings, Inc. v. Marketing Total S.A.
Claim Number: FA0702000915273
Complainant is SR Holdings, Inc. (“Complainant”), represented by Linda
M. Novak, of Fish & Richardson
P.C.,
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <sperrytop-sider.com> and < sperrybluefish.com>, registered with Capitoldomains, Llc and Belgiumdomains, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 14, 2007.
On February 12, 2007, Capitoldomains, Llc and Belgiumdomains, Llc confirmed by e-mail to the National Arbitration Forum that the <sperrytop-sider.com> and <sperrybluefish.com> domain names are registered with Capitoldomains, Llc and Belgiumdomains, Llc and that Respondent is the current registrant of the names. Capitoldomains, Llc and Belgiumdomains, Llc has verified that Respondent is bound by the Capitoldomains, Llc and Belgiumdomains, Llc registration agreements 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 February 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 6, 2007, 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@sperrytop-sider.com and postmaster@sperrybluefish.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sperrytop-sider.com> domain name is idential to Complainant’s SPERRYTOP-SIDER mark and <sperrybluefish.com> is confusingly similar to Respondent’s SPERRY mark.
2. Respondent does not have any rights or legitimate interests in the <sperrytop-sider.com> and <sperrybluefish.com> domain names.
3. Respondent registered and used the <sperrytop-sider.com> and <sperrybluefish.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SR Holdings, Inc., holds several trademark registrations for the SPERRY TOP-SIDER mark with the United States Patent and Trademark Office (“USPTO) (i.e., Reg. No. 1,819,293 issued on February 1, 1994), which have been used in connection with certain retail goods, primarily footwear and eyewear. Additionally, Complainant registered the mark SPERRY with the USPTO (i.e., Reg. No. 732,519 issued on June 5, 1962). Furthermore, Complainant has used the term “bluefish” in conjunction with the sales of its goods and services.
Respondent, Marketing Total S.A., registered the <sperrytop-sider.com> domain name on October 3, 2005 and the <sperrybluefish.com> domain name on October 11, 2006. Internet users who access both domain names are directed to a website that lists “sponsored links” to commercial websites which feature links to Complainant’s own website in addition to other websites that are not sponsored by Complainant, some of which are links to Complainant’s competitors. Additionally, pop up ads appear on the Internet user’s screen after exiting the Internet connection from Respondent’s domain names.
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 has established rights in the SPERRY TOP-SIDER and SPERRY mark pursuant to Policy ¶ 4(a)(i) through its registration of the marks with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <sperrytop-sider.com> domain name contains Complainant’s SPERRY TOP-SIDER
mark without the spaces and adds the generic top-level doman “.com.” Under Policy ¶ 4(a)(i), removing spaces and
adding top-level domans to a Complainant’s mark is irrelevant in establishing
whether or not the disputed domain names are identical to the mark. Therefore, the Panel finds that Respondent’s <sperrytop-sider.com> domain name
is identical to Complainant’s SPERRY TOP-SIDER mark pursuant to Policy ¶
4(a)(i). See
Respondent’s <sperrybluefish.com> domain name is confusingly similar to Complainant’s SPERRY mark pursuant to Policy ¶ 4(a)(i) because the disputed domain name contains Complainant’s entire SPERRY mark and adds the term “bluefish,” which Complainant uses in conjunction with the promotion of its goods. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <sperrytop-sider.com> and <sperrybluefish.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. 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. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests Pursuant to Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <sperrytop-sider.com> or <sperrybluefish.com> domain names. The WHOIS information identifies Respondent as “Marketing Total S.A.,” and Complainant has alleged that Respondent has no rights or legitimate interests in the SPERRY TOP-SIDER and SPERRY marks. The Panel cannot find any other evidence in the record suggesting that Respondent is commonly known by the domain names. Therefore, the Panel concludes that Respondent is not commonly known by the <sperrytop-sider.com> and <sperrybluefish.com> domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Respondent is using the <sperrytop-sider.com> and <sperrybluefish.com>
domain names to redirect Internet users to its website, which promotes
“sponsored links” for various websites that offer Complainant’s products or
similar products, including links to Complainant’s website and competitor
websites. Presumably, Respondent
receives referral fees for each redirected Internet user. Thus, Respondent’s diversion of Complainant’s
customers and potential customers does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or
a legitimate noncommerical or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp.
v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also
Coryn Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the <sperrytop-sider.com> and <sperrybluefish.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii), because it is diverting Internet users seeking information on Complainant’s products to a website displaying links to the websites of competitors offering Complainant’s goods. This use of the disputed domain names is likely to disrupt Complainant’s business by diverting business away from Complainant. Therefore, the Panel finds that Respondent’s registration and use of the <sperrytop-sider.com> and <sperrybluefish.com> domain names constitues bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Respondent’s use of the <sperrytop-sider.com> and <sperrybluefish.com> domain names, which are confusingly similar to Complainant’s SPERRY TOP-SIDER and SPERRY marks, is likely to cause confusion among customers searching for Complainant’s goods. Furthermore, Respondent presumably profits from this confusion by receiving referral fees for each Internet user it redirects to other websites. The Panel finds that such registration and use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds Complainant has satisfied 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 <sperrytop-sider.com> and <sperrybluefish.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: March 15, 2007
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