D1 Sports Holdings, LLC v. SilverTree Technology / Steven Smallwood
Claim Number: FA1305001502629
Complainant is D1 Sports Holdings, LLC (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is SilverTree Technology / Steven Smallwood (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <d1sports.com>, registered with Register.com, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2013; the National Arbitration Forum received payment on May 31, 2013.
On June 3, 2013, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <d1sports.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 June 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2013 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@d1sports.com. Also on June 5, 2013, 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.
The Panel received a Response from Respondent on June 27, 2013, but that Response was deemed to be technically deficient as it was filed after the deadline.
On July 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity of Domain Name
· Complainant has trademark registrations for the D1 mark, used in connection with sports training services offered at thirty locations in sixteen different US states. See Reg. No. 2,877,559 registered on Aug. 24, 2004 (filed Mar. 1, 2003).
· Respondent registered the <d1sports.com> domain name which merely adds the term “sports” to the D1 mark—a term descriptive of the kinds of services and products involved in Complainant’s sports training business.
Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests
· Respondent’s <d1sports.com> domain name resolves to a parked website that does not provide any active use. There is nothing bona fide or legitimately noncommercial about parking a domain name. Sometimes these hyperlinks are competing with Complainant’s business.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration
· Respondent wants to sell the domain name to Complainant for an amount far in excess of out-of-pocket expenses.
· Respondent sought to confuse Internet users into believing the hyperlinks and parked content were associated with Complainant in bad faith.
· Respondent had constructive and most likely actual knowledge of Complainant’s rights in the domain name, as there were occasionally competing goods offered on the website’s hyperlinks.
Respondent registered the <d1sports.com> domain name was registered on December 31, 2001.
B. Respondent’s Contentions
Policy ¶ 4(a)(ii): Respondent’s Rights & Legitimate Interests
· Respondent makes two uses of this domain name. First, Respondent offers an application that provides the schedules for all colleges. Second, Respondent uses the domain name to direct Internet users to the <hstrainer.com> domain name, wherein Respondent’s friend sells products to increase hand speed. Complainant’s claim that the website is parked are erroneous, as the domain name is directing Internet users to the business of Respondent’s friend. The content on the <hstrainer.com> domain name is not competitive to Complainant’s business as that website focuses on selling a single product, a hand speed trainer. Complainant’s business on the other hand involves personal training of an individual in a sports center.
· The <d1sports.com> domain name implies Division One college sports, and does not immediately implicate Complainant’s mark. The D1 mark is here being used to refer to the highest level of collegiate athletics, and the phrase is generally understood to refer to the twenty-three division one sports.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
· Bad faith registration is impossible based upon Complainant’s own assertions. Respondent could not have registered this domain name in bad faith when Complainant’s earliest alleged use of the mark was two years following the domain name’s registration.
C. Additional Submissions
In its additional submission, Complainant argues that Respondent’s bad faith use should be imputed to its earlier domain registration.
Complainant owns trademark registrations for DI, the earliest being registration number 2,877,559, whose registration certificate recites a first use date of March 1, 2003, filing date of August 18, 2003, and a registration date of August 24, 2004.
Respondent registered the disputed domain on December 31, 2001, a date preceding both Complainant’s first use date and the filing date of Complainant’s application.
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.
Preliminary Issue: Deficient Response
Respondent submitted its Response on June 27, 2013, two days after the June 25, 2013 deadline. Complainant’s counsel explains by e-mail that it mistakenly told Respondent that the deadline for the Response was June 27, 2013, the date on which another UDRP claim handled by Complainant’s counsel was due. Regardless, the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. This Panel, in its discretion however, has accepted and considered this Response. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Paragraph 4(a)(i) of the Policy requires Complainant to show that Respondent’s domain name is identical or confusingly similar to Complainant’s mark. This provision necessarily implies that Complainant’s rights predate the registration of Registrant’s domain name. Expert Computers, Inc. v. Name Delegation, FA 787937 (Nat. Arb. Forum Oct. 24, 2006). Respondent registered the disputed domain name on Dec. 31, 2001, which is prior to Complainant’s first use of its trademark and prior to Complainant’s filing of its trademark application. As Complainant has not shown that its rights predate the registration of Registrant’s domain name, Complainant has not satisfied paragraph 4(a)(i) of the Policy.
Because the Panel has determined that Complainant has not satisfied this requirement of Policy ¶ 4(a)(i), there is no need to determine whether Respondent has rights or legitimate interests in the domain name or whether Respondent registered or used the domain name in bad faith. Nevertheless, it should be noted that since Respondent’s domain registration predates Complainant’s rights to the mark, Respondent could not have registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <d1sports.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: July 16, 2013
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