The Baseball Club of Seattle, L.P. v. Domainly.com
Claim Number: FA1010001352195
Complainant is The Baseball Club of Seattle, L.P. ("Complainant"), represented by Richard S. Mandel of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Domainly.com ("Respondent"), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marinersbaseball.com>, registered with GoDaddy.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 14, 2010; the National Arbitration Forum received payment on October 14, 2010.
On October 14, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <marinersbaseball.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.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 October 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2010 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@marinersbaseball.com. Also on October 15, 2010, 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 November 11, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 makes the following assertions:
1. Respondent’s <marinersbaseball.com> domain name is confusingly similar to Complainant’s MARINERS mark.
2. Respondent does not have any rights or legitimate interests in the <marinersbaseball.com> domain name.
3. Respondent registered and used the <marinersbaseball.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Baseball Club of Seattle, L.P., is the owner of the Seattle Mariners Major League Baseball club. The club was founded in 1977 and has since used its MARINERS mark in connection with its baseball club and in the promotion of related services and merchandise. Complainant holds multiple trademark registrations for its MARINERS mark with United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,066,949 issued May 31, 1977).
Respondent, Domainly.com, registered the <marinersbaseball.com> domain name on June 7, 2001. The disputed domain name resolves to a website offering commercial links to relating to Complainant’s baseball club such as the unauthorized re-sale of Seattle Mariners game tickets and merchandise. The resolving website also features commercial links to third-party sites unrelated to Complainant’s good and services.
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 contends it has established rights in the MARINERS mark. The Panel finds that Complainant’s numerous trademark registrations with a federal trademark authority, the USPTO (e.g. Reg. No. 1,066,949 issued May 31, 1977), are sufficient evidence of its rights in the MARINERS mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that Respondent’s <marinersbaseball.com> domain name is confusingly similar to Complainant’s MARINERS mark. The disputed domain name only differs from Complainant’s mark by the addition of the descriptive word “baseball” and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that addition of a descriptive term does not sufficiently differentiate the disputed domain name from Complainant’s mark. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). The Panel also finds that the addition of a gTLD fails to properly distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel concludes that Respondent’s <marinersbaseball.com> domain name is confusingly similar to Complainant’s MARINERS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the element of Policy ¶ 4(a)(i) have been met.
Complainant contends that Respondent lacks rights and legitimate interests in the <marinersbaseball.com> disputed domain name. Previous panels have found that when a complainant establishes a prima facie showing in support of its allegations, the burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Complainant has established a prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <marinersbaseball.com> domain name. The WHOIS information identifies Respondent as “Domainly.com,” which is not similar to the disputed domain name. Complainant asserts it has not authorized or licensed Respondent to use or register its MARINERS mark in the disputed domain name. The Panel finds no additional evidence in the record that would show Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <marinersbaseball.com> domain name 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent’s <marinersbaseball.com> domain name resolves to a website featuring commercial links related and unrelated to Complainant’s baseball club. Some of the links offer the unauthorized re-sale of Complainant’s game tickets and merchandise. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to operate a website with third-party links for the unauthorized sale of Complainant’s goods and other unrelated items does not constitute 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). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Respondent’s resolving website features a link stating that the <marinersbaseball.com> domain name may be for sale. The link redirects Internet users to another website where Internet users can purchase the <marinersbaseball.com> domain name. Previous panels have found that a respondent’s offer to sell a disputed domain name is evidence that respondent lacks rights and legitimate interests. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use). The Panel finds that Respondent’s offer to sell the <marinersbaseball.com> domain name is evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant contends that Respondent displays a link on the website resolving from the <marinersbaseball.com> domain that states the website may be for sale. The link leads Internet users to another website where they can purchase the <marinersbaseball.com> domain name. Previous panels have found that a respondent’s online offer to sell a disputed domain name is evidence of respondent’s bad faith registration and use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also 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). Therefore, the Panel finds that Respondent’s offer to sell the <marinersbaseball.com> domain name constitutes bad faith use and registration under Policy ¶ 4(b)(i).
Respondent uses the <marinersbaseball.com> domain name to operate a website featuring third-party links related and unrelated to Complainant’s baseball club. Complainant asserts that Respondent’s use of the disputed domain name disrupts its business since Internet users intending to purchase Seattle Mariners game tickets and merchandise from Complainant may be redirected to Respondent’s website and purchase similar products through Respondent’s website instead. The Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
The Panel infers that Respondent receives click-through fees from the aforementioned third-party links and revenue earned through ticket and merchandise sales. Internet users searching for Complainant’s website may instead find Respondent’s website as a result of Respondent’s use of a confusingly similar disputed domain name. Internet users may then become confused regarding Complainant’s affiliation with and sponsorship of the disputed domain name, resolving website, and third-party links. Respondent attempts to gain from this confusion through the receipt of click-through fees and revenue earned. The Panel finds that Respondent’s use of the <marinersbaseball.com> domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); 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).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marinersbaseball.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 29, 2010
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