WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asian World of Martial Arts Inc. v. Texas International Property Associates
Case No. D2007-1415
1. The Parties
The Complainant is Asian World of Martial Arts Inc., of Philadelphia, United States of America, represented by Caesar, Rivise, Bernstein, Cohen, & Pokotilow, Ltd., of United States of America.
The Respondent is Texas International Property Associates, of Dallas, United States of America, represented by Tucker & Latifi, LLP, of United States of America.
2. The Domain Names and Registrar
The disputed domain names <proforcekarate.com> and <proforcemartialarts.com> (the “Disputed Domain Names”) are registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2007. On September 26, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the Disputed Domain Names. On October 8, 2007, after repeated requests for verification, Compana LLC transmitted by email to the Center a verification response that provided some of the information requested by its verification response, including confirmation that Respondent is listed as the registrant and providing the contact details. Although the response was incomplete, it did provide sufficient information for the Center to verify that the Complaint satisfied 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2007. The Response was filed with the Center on November 8, 2007.
The Center appointed David H. Bernstein as the sole panelist in this matter on November 27, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On November 28, 2007, Complainant filed a Request for Leave to File a Reply. Later that same day, Respondent objected to the proposed Reply. The Panel reviewed Complainant’s Request and determined that Complainant’s proposed Reply did not raise any new factual or legal matters that could not have been raised or anticipated in the Complaint. See Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609. Accordingly, on November 30, 2007, at the Panel’s direction, the Center informed the Parties that Complainant’s request was denied.
4. Factual Background
Complainant adopted the PROFORCE trademark in 1994 and has used the trademark since then in connection with martial arts clothing and equipment and in the advertising, marketing and sale of such goods in interstate commerce. In 1995, Complainant obtained two registrations for the PRO FORCE (and design) trademark from the United States Patent and Trademark Office (“USPTO”). One registration is for karate uniforms, karate belts, judo uniforms, judo belts, karate pants, tae kwon do uniforms, gym shorts, kung fu uniforms, kung fu sashes, ninja uniforms, sweat pants, sweatshirts, tank tops, jogging suits, workout pants and workout tops (Reg. No. 1,912,602); the second registration is for sporting equipment; namely, power grips, grasp springs, power twisters, exercise balls, hand grips, dumbbells, thigh conditioners, weight lifting belt, exercise suit, ankle/wrist weights, leg stretchers, boxing headguards, mouthguards, fist guards, forearm guards, fist/forearm guards, protective cup and athletic supporters, shin guards, shin/instep guards, knee/elbow guards; martial arts body shields, foam shields, air shields, shock bags, kick punch target, makiwara bags, kime bags, iron palm bags, training bags, double end balls, bag gloves, focus gloves, boxing gloves, speed bags, jumpropes, tone wheels, sit up bars and kenpo gloves (Reg. No. 1,918,893). Both of these registrations are incontestable. Complainant also owns other federal registrations containing the mark PROFORCE for use in connection with martial arts-related goods and services, including LIGHTNING BY PROFORCE (Reg. No. 2,131,164), TYPHOON BY PROFORCE (Reg. No. 2,221,999), THUNDER BY PROFORCE (Reg. No. 2,851,345) and GLADIATOR BY PROFORCE (Reg. No. 3,121,151).
Respondent registered the <proforcekarate.com> and <proforcemartialarts.com> (the “Disputed Domain Names”) on March 30, 2005 and April 5, 2005, respectively. Respondent uses the Disputed Domain Names for pay-per-click (“PPC”) landing pages. These landing pages operate by pulling in Google Adsense advertisements using the Disputed Domain Names (including Complainant’s PROFORCE trademark) as keywords. The advertisements displayed on Respondent’s websites advertise products and services the compete directly with Complainant’s goods and services.
5. Parties’ Contentions
Complainant cites its incontestable trademark registrations as prima facie evidence of the validity of its PROFORCE trademarks and its ownership of those marks. Complainant asserts that the Disputed Domain Names are confusingly similar to its trademarks because the Disputed Domain Names incorporate in their entirety the PROFORCE trademark, along with references to “karate” and “martial arts,” which terms are related to Complainant’s goods and services.
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Names because Respondent is not known as “Proforce” and is not making a bona fide offering of “Proforce” goods or services. Rather, Complainant states, Respondent is diverting Internet users to websites that advertise goods competitive with those of Complainant. Complainant states that Respondent’s websites do not constitute a fair use because Respondent is using the Disputed Domain Names for commercial gain and is misleadingly diverting consumers to its and its advertiser’s websites.
Finally, Complainant alleges that Respondent registered and is using the Disputed Domain Names because Respondent has intentionally attempted to attract, for commercial gain, Internet users to the “www.proforcekarate.com” and “www.proforcemartialarts.com” websites by creating a likelihood of confusion with Complainant’s PROFORCE trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s websites. Complainant also notes that Respondent has engaged in a pattern of cybersquatting, as evidenced by the more than two dozen decisions issued by UDRP panels ordering transfer of domain names registered by Respondent. See Tullett Prebon Group Limited v. Texas International Property Associates, WIPO Case No. D2007-0828; The Southern Company v. Texas International Property Associates, WIPO Case No. D2007-0773; American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592; Fifth Third Bancorp v. Texas International Property, WIPO Case No. D2007-0537; Vitalife, Inc. dba Tabak’s Health Products v. Texas International Property Associates, WIPO Case No. D2007-0507; Rockstar Games v. Texas International Property Associates, WIPO Case No. D2007-0501; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464; Sports Holdings Inc. v. Texas International Property Associates, WIPO Case No. D2007-0430; The Benevolink Corporation v. Texas International Property Associates, WIPO Case No. D2007-0404; Fry’s Electronics Inc. v. Texas International Property Associates, WIPO Case No. D2007-0343; Associated Bank Corp. v. Texas International Property Associates, WIPO Case No. D2007-0334; Barry D. Sears, Ph.D. v. Texas International Property Associates, WIPO Case No. D2007-0284; Outdoor Cap Company, Inc. v Texas International Property Associates, NAF Claim No. FA0706001015455; Mary’s Futons, Inc. v. Texas International Property Associates, NAF Claim No. FA0706001012059; Grounded Nomads, LLC dba Vocation Vacations v. Texas International Property Associates, NAF Claim No. FA0706000999659; RMC of Illinois Inc. v. Texas International Property Associates, NAF Claim No. FA0706000998091; Ganz v. Texas International Property Associates, NAF Claim No. FA0705000991778; Skyhawke Technologies, LLC v. Texas International Property Associates, NAF Claim No. FA0705000977213; Redcats USA, L.P. v. Texas International Property Associates, NAF Claim No. FA0704000960604; Hospira, Inc. v. Texas International Property Associates, NAF Claim No. FA0704000959934; Asbury Automotive Group, Inc. v. Texas International Property Associates, NAF Claim No. FA0704000958542; Constellation Wines U.S., Inc. v. Texas International Property Associates, NAF Claim No. FA0703000948436; Bond & Co. Jewelers, Inc. v. Texas International Property Associates, NAF Claim No. FA0703000937650; Jerry Damson, Inc. v. Texas International Property Associates, NAF Claim No. FA0702000916991; David Hall Rare Coins v. Texas International Property Associates, NAF Claim No. FA0702000915206; American Airlines, Inc. v Texas International Property Associates, NAF Claim No. FA0702000914854; ZRT Laboratory, LLC v Texas International Property Associates, NAF Claim No. FA0701000907499; JELD-WEN, inc v. Texas International Property Associates, NAF Claim No. FA0701000882053.
Respondent defends its registration and use of the Disputed Domain Names on the grounds that “proforce” is a generic word for “professional force,” which means “strength,” and that the mark PROFORCE has been registered and/or used descriptively by numerous third parties for a variety of other goods and services. Respondent thus asserts that Complainant lacks exclusive rights in the PROFORCE mark and, as such, its mark “cannot give rise to any protectable rights under the Policy.”
Respondent also asserts that it has the right to use the Disputed Domain Names because it is using each of them for a “web portal which provides users with a search function as well as ads provided through the Google Adsense program.” Respondent disclaims responsibility for the content of the particular ads displayed on the websites on the ground that a “domain name holder is not responsible for the potentially offending conten[t] where they have contracts with third parties, such as Google or Yahoo!, that control that content.”
Respondent also argues that it has a legitimate interest in the Disputed Domain Names because it is making a “nominative fair use,” which it describes as the “use of another’s trademark to identify, not the defendant’s goods or services, but the plaintiff’s goods or services” (quoting from 2 McCarthy on Trademarks and Unfair Competition § 23:11 (4th ed.)). Respondent further states that it “is providing locator and search services and any appearance on the disputed domains of Complainant’s ‘mark’ come from people searching for it. Respondent provides a link to Complainant’s goods and services and does [not] use ‘proforce’ to describe its goods or services.” Furthermore, Respondent states that, “[l]ike hundreds of others, Respondent is using the words to convey the idea of professionalism and power, the literal meaning of ‘pro force’ in English. Many others use such terms and there is no reason to prevent respondent from using ‘pro force’ in connection with other generic words. Respondent may fairly use descriptive or generic terms or acronyms of such as a commercial domain name, regardless of whether they are federally-registered.”
Further, in a defense of its use of the Disputed Domain Names for these PPC landing pages, Respondent asserts that “common acronyms and generic terms are legitimately subject to registration as domain names on a ‘first-come, first-served basis.’ The fact that advertising revenues may be generated by Respondent’s activity demonstrates a legitimate interest. As stated by the panel in GLB Servicos Interativos S.A. v. Ultimate Search Inc., WIPO Case No. D2002-0189, ‘Respondent is accused of using what amounts to a generic phrase to connect these generic concepts with search keywords in order to provide advertisers with targeted customer traffic. This is a legitimate business . . . .’ In The Landmark Group v. Digimedia L.P., NAF Claim No. 285459, Respondent registered ‘large numbers of dictionary words …. and generate[d] revenue by providing pay-per-click advertising links related to the generic nature of each site’s domain name.’ The panel held that, ‘as long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this business model is permitted under the Policy.’ Response at 5 (citations omitted).
Finally, Respondent contends that it did not register and use the Disputed Domain Names in bad faith. Rather, Respondent asserts, it had no knowledge of Complainant and independently registered the Disputed Domain Names for their “generic and descriptive functionality.” This is permitted, Respondent claims, because “the general rule is that the domain name is owned by the first to register.” Moreover, Respondent states, “unless a trademark is targeted by a domain, pay-per-click revenue does ‘not constitute evidence of bad faith registration or use.’ Terana, S.A. v. RareNames, WebReg, WIPO Case No. D2007-0489. The Terana Panel went on to state that ‘An inference of targeting may be drawn from the inherent distinctiveness of the mark in question or from the circumstance that the mark is famous or well-known.’ Here there has been no showing of any inherent distinctiveness nor has Complainant presented evidence of fame in Texas nor has the Complainant produced any evidence that a company in Texas had any reason to know of a small marketer in Philadelphia prior to the registration of the disputed domain names. Were Respondent located in Pennsylvania such an inference might be drawn but such is not the case.”
6. Discussion and Findings
Within the last two years, the incidence of PPC landing pages on the Internet has exploded. Internet users cannot help but notice the increasing proliferation of these landing pages, which typically purport to offer a list of links relevant to the domain name and a “search function”. The listed links and the search function, though, generally do not operate as a true search engine. A true search engine, like Yahoo! or Google, would provide a list of links to those web pages that appear to be most relevant to the user’s search. In contrast, Respondent’s PPC landing pages, like virtually all other PPC landing pages on the Internet, list only those links keyed to search terms for which advertisers have paid. Thus, in most cases, what might be highly relevant websites and information is not provided on the landing page or in response to searches entered through the landing page because no one has paid for those pages to be listed; instead, the only links provided are those for which some advertiser was willing to pay for placement. The reason these pages are structured in this way is that, each time an Internet user clicks on a listed link, it creates an opportunity for the owner of the PPC landing page to receive a small (typically automated) payment from the advertiser in consideration for having delivered the Internet user to the advertiser’s web page.
Given the limited usefulness and functionality of these PPC landing pages, one might wonder why they have become so very common on the Internet. One reason is that, as the cost of registering and maintaining domain names has fallen (and in some cases has approached zero), it takes a relatively small number of click-throughs a year to create an income stream that is greater than the cost of registering and maintaining a domain name registration. Exacerbating this problem is ICANN’s policy that has encouraged domain name tasting through a loophole initially intended to prevent registrars from having to pay for erroneously registered domain names. Because ICANN allows registrants a five day grace period to drop a domain name registration without incurring any charges, an entire industry has arisen around so-called ‘domainers’ who register huge swaths of domain names, post automated PPC landing pages at the websites to which these domain names resolve, and then monitor them for five days to see how much traffic each domain name attracts. Those domain names that receive a sufficient number of visits and that appear likely to generate a stream of click-through revenue are then kept, while those names that do not appear likely to generate sufficient revenue are released (at no charge to the registrant). The irony, though, is the released names are very often snapped up by another domainer for tasting for another five day period;1 the end result is that many domain names are in a constant state of tasting and re-registration, all without anyone ever having to pay the very modest registration fees for the domain names. In light of these practices, millions of domain names appear to be stuck in a semi-permanent state of tasting, effectively blocking those names from being registered while they (and many permanently registered domain names) resolve to PPC landing pages that do little more than clutter up the Internet.
With the proliferation of PPC landing pages has come a proliferation of UDRP challenges to the registered domain names. Although PPC landing pages appear to provide little societal benefit, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, that does not mean that they automatically violate the Policy. Rather, the Panel must still consider whether the Complainant has satisfied its burden of proving, under paragraph 4(a) of the Policy, the following three elements by a preponderance of the evidence, Bootie Brewing Co. v. Deanna D. Ward, WIPO Case No. D2003-0185 (acknowledging consensus on use of preponderance of the evidence standard):
(i) Each Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Complainant has submitted copies of its incontestable federal trademark registrations for the mark PROFORCE. A United States trademark registration is prima facie evidence of the validity of the mark. It may not be conclusive or determinative, but such a registration is entitled to a great deal of deference from a UDRP panel. mVisible Technologies, Inc., supra. Given the limited evidentiary record available to the Panel, the absence of any discovery, the inability of the Panel to take testimony and make credibility determinations, and the short time period available to the Panel for decision, a Panel should disregard a United States trademark registration only if Respondent presents “compelling evidence” that the registration was improperly granted or is likely to be cancelled. Id.
In this case, notwithstanding these incontestable registrations, Respondent asserts that Complainant’s trademark is generic, that Complainant therefore lacks exclusive rights in the PROFORCE mark, and that its mark thus “cannot give rise to any protectable rights under the Policy.” Those arguments are wholly without any support in the record. Even if “pro force” and “proforce” were understood as being synonymous with “professional force” or “strength,” those terms are hardly generic, or even descriptive, for the goods and services covered by Complainant’s trademark registrations. In that regard, the Panel notes that the USPTO registered Complainant’s PROFORCE marks without requiring any disclaimer of the term “proforce” and without requesting a showing of secondary meaning under Section 2(f) of the Lanham Act, which shows that the USPTO considered the term to be inherently distinctive.
Accordingly, Complainant has sustained its burden of showing that the Disputed Domain Names are confusingly similar to trademarks in which Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a Respondent has a right or legitimate interest in a disputed domain name where:
(i) Before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is the Complainant’s burden to prove that Respondent lacks rights or a legitimate interest. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Because it is difficult to produce evidence to support a negative statement, the threshold for Complainant to prove a lack of legitimate interest is low. Once Complainant makes out a prima facie showing on this element, the burden of production shifts to Respondent, although the burden of proof always remains on the Complainant. Id.; see also mVisible Technologies, Inc., supra.
Here, Complainant has made a prima facie showing that Respondent lacks any rights to or a legitimate interest in the Disputed Domain Names. In particular, Complainant alleges that Respondent is not known as “Proforce” and is not making a bona fide offering of “Proforce” goods or services. Rather, Complainant alleges, Respondent is diverting Internet users to websites that advertise goods competitive with those of Complainant, and that those websites do not constitute a fair use because Respondent is using the Disputed Domain Names for commercial gain and is misleadingly diverting consumers to its and its advertiser’s websites.
Respondent contends that it does have a legitimate interest in these domain names because, it asserts, it is making a “nominative fair use” of Complainant’s Trademark to refer to Complainant and its goods. Respondent also offers as an alternative argument that it is making a descriptive fair use of the Trademark “to convey the idea of professionalism and power, the literal meaning of ‘pro force’ in English. Many others use such terms and there is no reason to prevent respondent from using ‘pro force in connection with other generic words. Respondent may fairly use descriptive or generic terms or acronyms of such as a commercial domain name, regardless of whether they are federally-registered.” Finally, Respondent contends that it has a legitimate interest in these domain names because there is a legitimate interest in using generic domain names for PPC landing pages.
The Panel has carefully considered each of Respondent’s arguments, but concludes that none of them is sufficient to rebut Complainant’s showing that Respondent lacks any rights or legitimate interests in the Disputed Domain Names. First, unlike the case of what may be a legitimate reseller, Respondent is not offering on its websites information or products related solely to Complainant’s products. Cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. To the contrary, Respondent’s websites offer links to and advertisements for Complainant’s competitors. That does not constitute a nominative fair use; rather, it appears to constitute deceptive bait and switch advertising practices.
Second, the content of Respondent’s websites belies its defense that it is merely using the Trademarks in their descriptive meaning. It is true that, if the links on a landing page are genuinely based on the generic value of a domain name, that generally would be a fair use because there are no trademark rights implicated by the landing page. See, e.g., Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459 (legitimate interest “[if] the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”); See also National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424. Here, though, the links on Respondent’s website are clearly based on the Trademark value of the Disputed Domain Names – the links are not about generic products that offer professional force strength, but rather are focused on targeted advertising and promotion of “karate”- and “martial arts”-related products that are exactly the kinds of products sold by Complainant under the Trademarks. For example, when an Internet user clicks on the word “PRO FORCE” on Respondent’s landing page, the first listed advertisement is for “www.martialartssupermarket.com”, which sells products that directly compete with Complainant’s products. Tellingly, there is no reference to the words “pro force” or even “professional force” in the ad or website for “www.martialartssupermarket.com”, which shows that the word is not being used in any descriptive fashion but rather as a keyword tied directly to the trademark value of Complainant’s Trademarks.
For these same reasons, Respondent’s argument that domain name holders have an automatic right to post PPC landing pages keyed to what may be generic or dictionary words is incorrect2. To the contrary, as the Panel recently recognized in the mVisible Technologies, Inc. case, many domain names have both dictionary word meanings and trademark (or secondary) meanings, and when the links on the PPC landing page “are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inv. v. In Knot we Trust Ltd, WIPO Case No. D2006-0340 (same); Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353 (same).”3
For all these reasons, the Panel concludes that Complainant has satisfied its burden of showing that Respondent lacks any rights to or legitimate interests in the Disputed Domain Names.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the Disputed Domain Names can be considered to have been used and registered in bad faith if:
(i) circumstances indicating that the Respondent has registered and has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) the Respondent has registered the Disputed Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iii) by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
In this case because both of the Disputed Domain Names resolve to landing pages at which competitive services are offered, Complainant has established that Respondent’s use of these domain names is in bad faith. The Disputed Domain Names appear designed to attract Internet users who are looking for Complainant’s PRO FORCE goods, appear to cause confusion with Complainant’s marks and websites, appear to disrupt Complainant’s business by diverting consumers away from Complainant’s websites, and do all of these things for commercial gain because Respondent profits from the PPC revenue generated by these websites.
Respondent argues, however, that its registration of these Disputed Domain Names could not have been in bad faith because it had no knowledge of Complainant and independently registered the Disputed Domain Names for their “generic and descriptive functionality.” This defense has become commonplace among PPC landing page operators who claim to register numerous domain names, based solely on their dictionary meanings, without any specific knowledge of the trademark (or secondary) meanings of those words.
As the Panel noted in the recent mVisible Technologies, Inc. case, “subject to limited exceptions,4 it is true that registration of a domain name prior to the creation of any trademark rights (and prior to any knowledge of the imminent creation of trademark rights) would be persuasive evidence that the domain names were not registered with a bad faith intent to take advantage of the trademark (since the trademark was non-existent at the time of registration). See, e.g., e-Duction, Inc., supra.” Here, though, Respondent registered the Disputed Domain Names more than a decade after Complainant registered its trademarks. Moreover, the Disputed Domain Names combined Respondent’s PROFORCE Trademarks with the descriptive references to “karate” and “martial arts,” which closely identifies the kinds of goods sold by Complainant. It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its PROFORCE Trademarks.
For all the reasons, the Panel concludes that Respondent, a sophisticated party in the PPC landing page business and an experienced Respondent in UDRP proceedings, must have been aware of Complainant’s Trademarks at the time it registered the Disputed Domain Names. Accordingly, and because Respondent has also used the Disputed Domain Names in bad faith to attract Internet users to its PPC landing pages, the Panel finds that Complainant has satisfied its burden of proving that Respondent registered and used the Disputed Domain Names in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <proforcekarate.com> and <proforcemartialarts.com> be transferred to the Complainant.
David H. Bernstein
Dated: December 10, 2007
1 In some cases, the subsequent registrants are alleged to be affiliated with the releasing registrants. See Brian Krebs, “Dell Takes Cybersquatters to Court,” Washington Post, November 28, 2007, available at http://www.washingtonpost.com/wp-dyn/content/article/2007/11/28/AR2007112801679.html.
2 There also is a question of whether the particular combination of the various dictionary terms in the two disputed domain names necessarily produces what may be considered stand-alone dictionary terms in themselves. Cf Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082.
3 In Alpine Entertainment, supra, the three-member panel in fact found that “a purported description of links that merely appear on a website as part of such a PPC arrangement does not itself constitute grounds for establishing rights or legitimate interests in a disputed domain name.” In discussing the way in which many PPC landing pages are created, that Panel further noted that “[h]owever the content of a website may be determined under such arrangements, an assertion of descriptive rights or legitimate interest by a Respondent does not sit comfortably with a denial of knowledge or responsibility for the presence of said content.”).
4 See, e.g., ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669.