ATP Tour, Inc. v. Above.com Domain Privacy
Claim Number: FA1407001569630
Complainant is ATP Tour, Inc. (“Complainant”), represented by Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barclaysatpworldtour.com>, registered with ABOVE.COM PTY LTD.
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 E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2014; the National Arbitration Forum received payment on July 14, 2014.
On July 22, 2014, ABOVE.COM PTY LTD. confirmed by email to the National Arbitration Forum that the <barclaysatpworldtour.com> domain name is registered with ABOVE.COM PTY LTD. and identified the current registrant of the domain name as Shu Lin, Zhongshan District, Dalian, China.
ABOVE.COM PTY LTD. has verified that the registrant is bound by the ABOVE.COM PTY LTD. 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 July 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration (including both the public whois data and that provided in the registrar’s verification email) as technical, administrative, and billing contacts, and to postmaster@barclaysatpworldtour.com. Also on July 22, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant is the governing body of the worldwide men’s professional tennis circuit. In the late 1980s Complainant began organizing its own professional tennis circuit. Complainant has operated this circuit under the names ATL WORLD TOUR, ATP TOUR, and related names and marks. In 2008 Complainant announced that Barclays would be the title sponsor of the ATP WORLD TOUR FINALS, an annual tournament that serves as the finale of the men’s professional tennis season, from 2009 through at least 2015. Complainant promotes the BARCLAYS ATP WORLD TOUR FINALS on its website, and cites substantial media coverage that the event has received. Complainant claims longstanding trademark rights in ATP WORLD TOUR and related marks by virtue of registration in the U.S. and the European Community and at common law.
Complainant contends that the disputed domain name, <barclaysatpworldtour.com>, is identical or confusingly similar to its marks. Complainant contends further that Respondent has no rights or legitimate interests in the domain name. In support thereof, Complainant states that Respondent is not and has not been commonly known by the domain name, and Complainant has not authorized Respondent to use its marks. Complainant asserts that Respondent registered the domain name in order to trade off of the goodwill associated with Complainant’s tournament, and is using the name to redirect Internet users to third-party sites designed to dupe them into downloading potentially harmful adware or other malware, from which Respondent receives fees or other compensation. Complainant alleges that this use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.
Finally, Complainant contends that Respondent registered and is using the domain name in bad faith, based upon the allegations set forth above and the fact that Respondent registered the domain name in the same month that the first BARCLAYS ATP WORLD TOUR FINALS event was held, demonstrating that Respondent was aware of Complainant’s rights and intended to capitalize on the media attention surrounding the event.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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.
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.”).
The disputed domain name is identical to Complainant’s ATP WORLD TOUR mark, but for the addition of BARCLAYS, a reference to the sponsor of Complainant’s tournament, and the “.com” top-level domain. These additions do not diminish the similarity with Complainant’s mark. See, e.g., Google Inc. v. Gillespie, FA 1434643 (Nat. Arb. Forum May 20, 2012) (finding <googlebarclays.com> confusingly similar to GOOGLE); Barclays Bank PLC v. Barclaysatpworldtourfinal.com, D2010-2152 (WIPO Jan. 26, 2011) (finding <barclaysatpworldtourfinal.com> confusingly similar to BARCLAYS). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark and corresponds almost exactly to the name used by Complainant to promote its annual tournament. It was registered without authorization and for the purpose of profiting by confusion with Complainant. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent’s opportunistic registration of the disputed domain name and its use of the domain name in connection with a deceptive download scheme and potentially malicious websites aimed at Internet users seeking Complainant’s site fall squarely under paragraph 4(b)(iv). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barclaysatpworldtour.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 20, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page