WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lance Armstrong Foundation v. Josef Zirnsak

Case No. D2007-0848

 

1. The Parties

Complainant is the Lance Armstrong Foundation (“Complainant” or “LAF”), a non-profit corporation incorporated under the laws of the State of Texas, with a principal place of business located in Austin, Texas, United States of America.

Respondent is Josef Zirnsak (“Respondent”), an individual residing in San Francisco, California, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <livestrongshop.com> (the “Domain Name”). The registrar is GoDaddy Software, Inc. (the “Registrar”).

 

3. Procedural History

On June 9, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On June 11, 2007, the Center received hardcopy of the Complaint. On June 12, 2007, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On June 12, 2007, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.

On June 19, 2007, after resolution by the Registrar of the Domain Name expiry issue, the Center received an Amended Complaint via email. On June 27, 2007, the Center received hardcopy of the Amended Complaint.

The Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On June 27, 2007, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On July 20, 2007, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On July 31, 2007 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel.

 

4. Factual Background

On July 30, 2006, a customer (third-party Robert Kuropatwa) notified an LAF customer service representative that a website at the Domain Name <livestrongshop.com>, a Czech language website was selling purported LIVESTRONG bracelets for 99 Czech Korunas (“ZK”), a value of approximately US$5, plus postage to the Czech Republic of an additional (39-60 ZK). LAF sells LIVESTRONG bracelets for US$1 each, with all proceeds benefiting LAF’s charitable activities. LAF learned that <livestrongshop.com> was registered to the Respondent, an individual named Josef Zirnsak.

Respondent registered and is using the Domain Name <livestrongshop.com> in connection with a website in the Czech language that sells rubber bracelets that purport to be LAF’s LIVESTRONG bracelets. Respondent uses the Domain Name for the purpose of selling yellow rubber bracelet products.

On September 27, 2006, LAF sent a cease and desist letter to Respondent asserting that he was infringing its LIVESTRONG Mark by, inter alia, registering and using the Domain Name <livestrongshop.com> and demanding that Respondent transfer the Domain Name to LAF. No response has been received to the cease and desist letter to Respondent. LAF made further attempts to deliver the demand letter, but to date has not received confirmation of receipt of these letters and has received no response or other communication from Respondent.

 

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has common law trademark and service mark rights in LIVESTRONG (the “Mark”) used in connection with charitable fundraising services; educational services in the field of cancer, cancer recovery, and survival; clothing; and bracelets. These rights have been recognized in other WIPO UDRP proceedings including Lance Armstrong Foundation v. CSA Marketing, WIPO Case No. D2005-0886 and Lance Armstrong Foundation v. Chris Angeles, WIPO Case No. D2005-0888. Complainant contends that the LIVESTRONG Mark has become famous in connection with LAF’s distinctive yellow bracelets, sold to increase public awareness about cancer survivorship issues and to raise money for LAF’s charitable programs. The LIVESTRONG bracelets are sold by LAF and its partners for US$1, with all proceeds benefiting LAF and its charitable activities. This campaign has been extraordinarily successful, with more than 70 million LIVESTRONG bracelets sold as of the filing of this complaint.

Complainant further contends that LAF owns a federal registration for the LIVESTRONG Mark in connection with “jewelry” and “charitable fundraising service” and applications to register the trade dress of it LIVESTRONG bracelets. LAF also owns two New York State registrations for the LIVESTRONG Mark in connection with “charitable fundraising services and educational services, namely organizing and conducting conferences in the field of cancer, cancer recovery and survival” and “jewelry and clothing such as shirts, jackets, pants, shorts, jerseys, underwear, athletic wear, swimwear and beach wear, foot wear, namely shoes and socks, headwear, namely hats, caps, visors and helmets, outerwear, namely gloves and scarves.

ii. Complainant argues that the Domain Name is virtually identical or confusingly similar to the LIVESTRONG Mark, pursuant to paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the LIVESTRONG Mark with the addition of the term “shop” which is generic or non-distinctive.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Complainant further contends that Respondent registered the Doman Name on June 24, 2005, more than a year after LAF had begun selling its LIVESTRONG bracelets and after more than forty-eight million of the LIVESTRONG bracelets had been sold. Respondent uses the <livestrongshop.com> Domain Name for a website through which he sells a bracelet that appears identical to LAF’s charitable LIVESTRONG bracelet. Respondent used the Domain Name for a website which is itself in direct competition with LAF’s website “www.livestrong.org” at which LAF sells its LIVESTRONG bracelets. Furthermore, Respondent presents the unique stylized form of the LIVESTRONG bracelet featuring a combination of standard and bold lettering in which LAF owns exclusive rights. Complainant alleges that this is not a legitimate or bona fide use of the Domain Name. Therefore, Respondent cannot demonstrate rights or legitimate interest in the Domain Name under paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.

Complainant further contends that any disclaimer on Respondent’s website is ineffective. The website prominently displays the LIVESTRONG Mark together with principal elements of Complainants LIVESTRONG Mark, such as color and design. Respondent’s disclaimer does not cleanse the confusion created in attracting Internet users to Respondent’s website.

Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(ii) because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the LIVESTRONG Mark in a domain name or in any other manner.

Complainant further contends that Respondent is profiting from the sale of his own bracelets and cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(iii) because he is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Respondent has deliberately registered the Domain Name containing the LIVESTRONG Mark to attract the attention of Internet users.

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of paragraph 4(a)(iii).

Complainant contends that Respondent is using his Domain Name and website for commercial purposes to intentionally attract Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s LIVESTRONG Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location. Complainant further contends that such activities constitute bad faith pursuant to paragraph 4(b)(iv).

B. Respondent’s contentions

i.-iv. Respondent has chosen not to respond to any of the allegations of Complainant in this proceeding.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 , n. 3.

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that LAF owns a federal registration for the LIVESTRONG Mark in connection with “jewelry” and “charitable fundraising service” and applications to register the trade dress of its LIVESTRONG bracelets. LAF also asserts ownership of two New York State registrations. Complainant contends that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the LIVESTRONG Mark. 15 U.S.C. 1115. Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has chosen not to contest the allegations of Complainant. Therefore, Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the LIVESTRONG Mark.

The Panel additionally finds that the facts support common law trademark rights of Complainant in the LIVESTRONG Mark.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the LIVESTRONG Mark pursuant to the Policy paragraph 4(a)(i). Complainant argues that the Domain Name is virtually identical or confusingly similar to the LIVESTRONG Mark, pursuant to paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the LIVESTRONG Mark with the addition of the term “shop” which is generic or non-distinctive.

Respondent has not contested the assertions by Complaint that the Domain Name is identical with or confusingly similar to the LIVESTRONG Mark.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition  23:50 (4th ed. 1998).

The Panel notes that the entirety of the LIVESTRONG Mark is included in the Domain Name and that the addition of the phrase “shop” is non-distinctive. Therefore, the Panel finds that the Domain Name is confusingly similar to the LIVESTRONG Mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

The Panel finds that Respondent registered the Domain Name and set up the website to which it resolves for the purpose of selling bracelets that appear identical to LAF’s charitable LIVESTRONG bracelet. Respondent presents the unique stylized form of the LIVESTRONG bracelet featuring a combination of standard and bold lettering in which LAF owns exclusive rights. Such sales are not a legitimate or bona fide use of the Domain Name. Therefore, Respondent cannot demonstrate rights or legitimate interest in the Domain Name under paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.

There is no evidence that Respondent is commonly known by the Domain Name under paragraph 4(c)(ii). Nor is there any evidence that Respondent is using the Domain Name for a legitimate noncommercial or fair use without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the LIVESTRONG Mark. Respondent has deliberately registered domain name containing the LIVESTRONG Mark to attract the attention of Internet users, which is not a legitimate or a noncommercial use under paragraph 4(c)(iii).

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product.

Complainant contends that Respondent is using the disputed Domain Name and website for commercial purposes to intentionally attract Internet users to Respondent’s website location, by creating a likelihood of confusion with the complainant’s LIVESTRONG Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant further contends that such activities constitute bad faith pursuant to paragraph (4)(b)(iv). Respondent has not contested these allegations. The Panel finds that the elements of paragraph (4)(b)(iv) are supported by the evidence. Therefore, Panel finds that Respondent registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Panel concludes (a) that the Domain Name <livestrongshop.com> is confusingly similar to Complainant’s registered LIVESTRONG Mark, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <livestrongshop.com> be transferred to Complainant.


Richard W. Page
Sole Panelist

Dated: August 18, 2007