WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lance Armstrong Foundation, Inc. v. Entre Advisors LLC, William Lacy

Case No. D2007-1671

 

1. The Parties

Complainant is Lance Armstrong Foundation, Inc., Austin, Texas, United States of America, represented by the law firm DLA Piper US LLP, United States of America.

Respondent is Entre Advisors LLC, Haddonfield, New Jersey, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <livestrongfitness.com> and <livestrongfitness.org> are registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2007. On November 15, 2007, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain names at issue. On November 16, 2007, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified 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 November 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2007. The Respondent did not submit any response, but on December 10, 2007, Respondent submitted a settlement offer by email to Complainant, with a copy to the Center. (As discussed below under “Factual Background”, the parties had been communicating about possible settlement for some weeks prior to commencement of this proceeding.)

The Center advised Respondent that it would not grant an extension to take account of possible settlement discussions without Complainant’s consent. When Complainant did not reply to the Center within the prescribed time, the Center accordingly notified the Respondent’s default on December 13, 2007.

The Center appointed Richard G. Lyon as the sole panelist in this matter on January 4, 2008. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant’s founder, Lance Armstrong, is world-famous as both a cyclist and as a cancer survivor. In 1997 Mr. Armstrong founded the Lance Armstrong Foundation to support public health initiatives, national advocacy, research, and survivorship education, as well as providing resources in the field of cancer and cancer survivorship. Among other things, Complainant sells wrist bands and fitness clothing under the name LIVESTRONG in order to raise money to support its mission. More than 65 million LIVESTRONG bracelets have been sold from January 2004 through October 2007. Complainant owns seven trademarks registered in the United States Patent and Trademark Office (USPTO) that incorporate the term LIVESTRONG for various goods and services consistent with its mission. It has four further applications pending in the USPTO and two New York state registrations for marks consisting of or including LIVESTRONG. All but one of the USPTO-registered marks were registered in 2006 or 2007; the other was assigned to Complainant by an unrelated party in 2005. Most of these marks claim a first use in commerce of May 2004, though one claims a first use of December 2003.

Respondent registered the disputed domain name in September 2004. Since that date Respondent has used the disputed domain names for websites that permit an Internet user to search for various goods or services related to fitness, health insurance, weight loss and dietary products, and other life and health-related items. The Panel’s inspection of these websites and screen shots submitted with the Complaint reveal a series of categories, each containing hyperlinks, and that Respondent offers no goods or services of its own for sale.

In July 2007, Complainant’s counsel sent Respondent a “cease-and-desist” letter, asserting that Respondent was infringing Complainant’s trademark by registering and using the disputed domain names. After a second such letter Respondent replied by offering to contribute the disputed domain names to Complainant, a charitable institution, if Complainant would “realize the value of this donation at [USD] 50,000” and would recognize Respondent as an contributor to Complainant and its mission. Complainant’s counsel responded by telephone, indicating that Complainant would accept a contribution of the domain names, and would acknowledge that these would be used in furtherance of Complainant’s charitable purposes, but declined to endorse any valuation. As is common with in-kind charitable donations in the United States, the putative recipient (Complainant) left valuation of the contribution to the putative donor, Respondent.

Respondent subsequently indicated that it had received substantial offers from third parties to purchase the disputed domain names. One email noted “valuations are across the board from [USD] 100k-300k”. Respondent asked if Complainant would be interested in acquiring the domain names on this basis. Complainant’s counsel declined, reiterating its offer to accept the domain names of a contribution but leaving valuation to Respondent or, alternatively, to reimburse Respondent its reasonable out-of-pocket costs related to registration of the disputed domain names in consideration of transfer of them to Complainant.

Further unsuccessful email communications regarding a possible settlement continued through November 5, 2007, on which date Respondent noted “if you [Complainant] make us [Respondent] an offer we can’t refuse, I’ll recommend the transfer”. Complainant filed its Complaint one week later. As noted Respondent made a final settlement offer on December 11, 2007, that drew no reply from Complainant.

 

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

Complainant has rights in its LIVESTRONG marks by virtue of their registration with the USPTO and active use in commerce since early 2004. In support of its rights prior to federal registration, Complainant submits numerous articles from various media that discuss the nature and extent of Complainant’s LIVESTRONG campaign, and its marketing manager’s declarations that Complainant sold or otherwise distributed more than twenty million LIVESTRONG bracelets to the public prior to Respondent’s September 2004 registration of the disputed domain names.

The disputed domain names are confusingly similar to Complainant’s marks because their dominant feature is the LIVESTRONG phrase that makes up Complainant’s mark. Because Respondent uses the domain names for health and fitness-related products and includes those descriptions in them, confusion is virtually certain as Complainant is also active in selling goods and services in these fields.

Respondent has demonstrated no rights or legitimate interests in or to the disputed domain names. Complainant has not authorized Respondent to use its marks, Respondent is not affiliated with Complainant, Respondent does not produce or sell any goods or services that use the name LIVESTRONG or Livestrong Fitness, and Respondent is not known individually or in its business by the word LIVESTRONG.

The facts in the previous paragraph also demonstrate that Respondent registered and has used the disputed domain names in bad faith. Respondent’s offer to sell the disputed domain names for far more than its cost of registering them also illustrates Respondent’s bad faith. Respondent’s use of Complainant’s marks in the disputed domain names, for commercial purposes, including selling products competitive with those of Complainant, constitutes trademark infringement, another indication of bad faith. By incorporating Complainant’s well-known marks into its domain names and websites, Complainant creates initial interest confusion among Internet users who may be misled to Respondent’s site when using Complainant’s mark as a search tool. Such conduct comes within the example of bad faith in paragraph 4(b)(iv) of the Policy.1

B. Respondent

Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Policy Elements. The Complainant must prove the elements set out in paragraph 4(a) of the Policy:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

The Panel shall issue its decision based on the Complaint, the evidence presented, the Policy, the Rules, and the Supplemental Rules. Unlike civil litigation in the United States of America, Respondent’s default does not automatically result in a decision for Complainant or constitute an admission of matters pleaded in the Complaint.2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”), paragraph 4.6, and cases there cited. Complainant must establish each of these elements with competent evidence.

A. Identical Or Confusingly Similar To A Mark In Which Complainant Has Rights.

Complainant has established this element of the Policy by virtue of its federally-registered LIVESTRONG marks. For purposes of paragraph 4(a)(i) of the Policy, rights in a mark are determined as of the date the Complaint is filed, see Overview, paragraph 1.4, although the timing of Complainant’s registration of the mark vis--vis the registration of the domain name may affect the Panel’s analysis under the other two operative Policy paragraphs. Because the disputed domain names use LIVESTRONG as their dominant feature, they are confusingly similar to Complainant’s trademarks.

B. Rights or Legitimate Interests.

Nothing in the record, including the settlement correspondence submitted as Exhibits to the Complaint, provides any basis for a finding that Respondent has a right or legitimate interest in the disputed domain name.

Complainant did not license Respondent to use its marks, there is nothing to show that Respondent has ever been known by the disputed domain name, and Respondent’s use of the domain name is commercial in nature. Complainant has made the required prima facie showing that Respondent lacks rights or legitimate interest in the disputed domain names, and Respondent has countered with no evidence to the contrary. Paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith.

Respondent’s offer to sell the disputed domain names for hundreds of thousands of dollars is (based on Respondent’s “Valuations…from 100k to 300k”), as Complainant argues, convincing evidence of Respondent’s use of the disputed domain names in bad faith.

Whether Respondent registered the disputed domain names in bad faith is a closer question. Respondent registered the disputed domain names in September 2004, before any trademark registration by Complainant. Notwithstanding this fact, Complainant has presented convincing – well-nigh overwhelming – evidence that its LIVESTRONG campaign was well known in the United States of America almost immediately after its commencement in early 2004, eight or nine months before Respondent registered the disputed domain names. Among the evidence submitted is a declaration of Respondent’s marketing manager attesting to sales of distribution of 20 million LIVESTRONG bracelets prior to September 2004 and a plethora of media articles, reports, advertising, and commentary that demonstrate that the LIVESTRONG campaign was closely associated with Complainant and its founder well before Respondent registered its domain names. With this evidence Complainant has shown common law rights in its marks at the time Respondent registered the disputed domain names.

In its email correspondence with Complainant’s counsel Respondent admits knowledge of Mr. Armstrong, and as in Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635, Complainant’s evidence would render incredible a denial by Respondent of any knowledge of Complainant or its marks at the time of registration. Particularly is that so when Respondent chose to use the disputed domain names for hyperlinks to products in the health care and fitness fields, two areas in which Complainant, its founder, and the LIVESTRONG campaign were known to be active and had established identification of the LIVESTRONG mark with Complainant.

Complainant has established bad faith in registration under paragraph 4(a)(iii) of the Policy.

 

7. Decision

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, <livestrongfitness.com> <livestrongfitness.org>be transferred to the Complainant.


Richard G. Lyon
Sole Panelist

Dated: January 16, 2008


1 “[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

2 In the email correspondence with Complainant’s counsel Respondent acknowledged receipt of the Complaint, so there is no question of jurisdiction over this proceeding.