The Complainant is NB Trademarks, Inc., of United States of America, represented by Jacobson Holman PLLC, United States of America.
The Respondents are Domain Privacy LTD, of United States of America and Abadaba S.A., of the Republic of Panama.
The disputed domain name <aliensport.com> is registered with Fabulous.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2008. On December 24, 2008, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On January 5, 2009, Fabulous.com transmitted by email to the Center its verification response confirming that Domain Privacy LTD 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” or “UDRP”), 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 Domain Privacy LTD of the Complaint, and the proceedings commenced on January 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2009. Domain Privacy LTD did not submit any response. Accordingly, the Center notified the Respondent's default on January 28, 2009.
The Center appointed Angela Fox as the sole panelist in this matter on February 4, 2009. 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 February 14, 2009, Abadaba S.A., a Panamanian corporation, filed a late response by email to the Center, copied to the attorneys for the Complainant. Abadaba S.A. claimed to be the beneficial owner of the disputed domain name. On February 17, 2009, the Complainant's attorneys filed by email to the Center, copied to Domain Privacy LTD and Abadaba S.A., an unsolicited supplemental brief replying to Abadaba S.A.'s email of February 14, 2009.
The Complainant is a United States (or “U.S.”) based manufacturer of golf clubs and accessories. It has been using the trademark ALIEN SPORT in the United States since 1992 in respect of a range of golf clubs. It has since added other “alien”-variant brand names including ALIEN on its own, ALIEN TUTCH and ALIEN GOLF in respect of golf clubs and related goods.
The Complainant owns various United States federal trademark registrations and pending applications for ALIEN SPORT and other ALIEN trademarks. Copies of the following were annexed to the Complaint:
- U.S. reg. no. 1722170 ALIEN SPORT filed on October 6, 1992
- U.S. reg. no. 2026089 ALIEN SPORT & Design filed on December 24, 1996
- U.S. reg. no. 2702377 ALIEN TUTCH filed on April 1, 2003
- U.S. reg. no. 3137635 ALIEN filed on September 5, 2006
- U.S. reg. no. 3143999 ALIEN GOLF filed on September 19, 2006
- U.S. reg. no. 3221150 ALIEN GOLF & Design filed on March 27, 2007
- U.S. reg. no. 3221151 ALIEN & Design filed on March 27, 2007
- U.S. app. no. 76/632001 ALIENSPORT.COM (pending) filed on March 1, 2005
- U.S. app. no. 76/632000 ALIENGOLF.COM (pending) filed on March 1, 2005.
The disputed domain name was registered on September 2, 2006. It has been in use for an advertising page with rotating links to third-party websites on topics relating primarily to golf, golf clubs and golf accessories, including links referring to the Complainant's ALIEN golf clubs. Clicking on “Alien Golf Clubs” under “Related Searches” takes the visitor to a separate page of sponsored listings promoting various competitors' golf clubs. Other golf-related links in the “Related Searches” list take the visitor to further lists of competing golf equipment vendors.
In its email of February 14, 2009 to the Center and the Complainant's attorneys, Abadaba S.A. asserted ownership of the disputed domain name. It stated that the proprietor details on the record were those of a privacy service and explained its late reply as resulting from unsuccessful efforts to settle the matter informally.
There is no evidence on the record apart from the statements made in Abadaba S.A.'s email that the latter is indeed the owner of the domain name. However, Abadaba S.A.'s claim to ownership and to liability as a respondent in the proceeding is a statement against interest that, in the Panel's view, is unlikely to have been made unless true.
Recognition of that fact does not, however, necessarily entail that the Panel must consider the further contents of the late response. The Panel notes, in particular, that Abadaba S.A.'s email of February 14, 2009 was not only filed after the term for Response had expired, but does not conform to the requirements of Rule 5(b) of the Rules. Notably, it was submitted by email only, and omits the certification required by Rule 5(b)(viii) that the information contained in the response is to the best of the Respondent's knowledge complete and accurate, that the Response is not being presented for any improper purpose, and that the assertions in the Response are warranted under the Rules and applicable law.
The Panel's discretion to admit a late, deficient response falls within its general discretion under Paragraph 10(a) of the Rules to conduct the administrative proceeding in the manner it considers appropriate in accordance with the Policy and Rules. Under Paragraph 10(b) of the Rules, the Panel has a duty to ensure that the parties are treated equally, that each has a fair opportunity to present its case, and that the proceedings are conducted expeditiously. That the latter duty in particular may be compromised by the acceptance of late responses is well illustrated by the fact that, in this case, an unsolicited supplemental submission by the Complainant followed closely on the heels of the late Response.
Although panels have in some circumstances exercised their discretion to accept administratively deficient responses, other panels have been reluctant to do so where a response is submitted only by email and without the required accompanying certification under Paragraph 5(b)(viii) of the Rules (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; EAuto, Inc. v. Available-Domain-Names.com, d/b/a Intellectual-Assets.com, Inc., WIPO Case No. D2000-0120; and Crédit Industriel et Commercial S.A. v. Yu Ming, WIPO Case No. D2005-0458).
Where a late, deficient response clarifies an issue fundamental to a dispute, however, and its admission will not prejudice either party or substantially delay the proceedings, it may be appropriate to take the contents of the response into account. In this case, Abadaba S.A.'s email of February 14, 2009 clarifies that Abadaba S.A. is the beneficial owner of the disputed domain name and that the registrant on record, Domain Privacy LTD, is merely a privacy service. It is clear from the Complainant's supplemental submission of February 17, 2009 that the Complainant was not aware of this fact when the Complaint was filed. In light of this new information, the Complainant's attorneys filed a supplemental submission within two business days of the Center's receipt of the late, deficient response, highlighting, inter alia, that Abadaba S.A. had been the subject of six prior UDRP decisions finding improper registration of domain names under the Policy.
Taking all these factors into account, it is clear that the late Response, although administratively deficient, casts light on an important issue in the dispute that is directly relevant to the question of whether the domain name was registered and used in bad faith. As indicated above, the Panel finds that even without the required certification under Rule 5(b)(viii), the late response is credible on the issue of Abadaba S.A.'s claimed ownership of the disputed domain name. The Panel therefore admits the late Response into the proceeding and treats Abadaba S.A. as a co-Respondent.
Paragraph 12 of the Rules allows a panel in its discretion to request supplemental filings from either party, and although the Rules do not provide expressly for unsolicited submissions, under Paragraph 10(a) the Panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is conducted expeditiously. Other panelists have accepted unsolicited supplemental submissions under this rule (see Inter alia, AutoNation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0058).
A supplemental filing naturally has the potential to delay and complicate proceedings. Consequently, whether it is appropriate to admit an unsolicited supplemental filing will depend inter alia on its relevance to the issues in the case, whether the Panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not.
In this case, the Complainant's supplemental submission replies to Abadaba S.A.'s late clarification of the domain name's ownership, made only after the Complaint was filed. It is relevant to the issue of bad faith and assists the Panel in reaching a fair decision. Given that the record did not apparently reflect the actual ownership of the disputed domain name, the Respondents can hardly be prejudiced by the Complainant being permitted to re-frame its Complaint to take account of the true ownership position. The Panel therefore also admits the Complainant's reply of February 17, 2009 into the proceeding.
The Panel has considered whether the Respondents should be given an opportunity to reply to the Complainant's supplemental submission. It has come to the view that they should not. The additional points made by the Complainant relate mainly to issues that are either a matter of public record (such as Abadaba S.A.'s involvement in prior UDRP proceedings) or which the Panel is not taking into account (see the Panel's comments on the settlement negotiations in section 7(C) below. The Parties will not be prejudiced, and procedural efficiency will be better served, by the Panel proceeding to a decision based on the materials now before it.
The Complainant asserts that the disputed domain name is identical to its registered ALIEN SPORT trademark and its pending U.S. trademark application for ALIENSPORT.COM, and confusingly similar to its other ALIEN trademarks.
It avers that the Respondents have no rights or legitimate interests in the disputed domain name.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant points to its own use of ALIEN SPORT in respect of golf clubs since 1992, more than 14 years before the disputed domain name was registered, and to the Respondents' use of the Complainant's ALIEN trademark on the website linked to the disputed domain name in order to promote goods of the Complainant's competitors. The Complainant submits that the Respondents are likely profiting from visitors clicking through to the sponsored links on their site. The Complainant further alleges that both Respondents are habitual cybersquatters and that they registered the domain name with the intention of preventing the Complainant from reflecting its ALIEN SPORT trademark in a corresponding domain name. The Complainant further alleges that the Respondents registered the disputed domain name for the purpose of sale to the Complainant for consideration in excess of the Respondents' out-of-pocket costs directly related to the domain name.
In its late Response, Abadaba S.A. described itself as a Panamanian company whose business is in registering unused domain names. It denies any awareness of the Complainant's ALIEN SPORT golf club brand prior to registration of the disputed domain name and states that it has removed all golf-related links from the site. Abadaba S.A. asserts that to order the transfer of the disputed domain name would be “excessive and unwarranted.”
Under paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
The Complainant has shown that it owns registered trademark rights in the word mark ALIEN SPORT, registered under U.S. federal trademark registration no. 1722170.
The trademark ALIEN SPORT is identical to the disputed domain name. The omission of spaces between words is a common feature of domain names, which cannot incorporate spaces per se, and neither the omission of the spaces nor the addition of the non-distinctive domain name suffix “.com” detracts from the essential identity of the domain name and trademark.
The Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the complainant, but panels have long recognised that the information needed to prove such a right or interest is normally in the possession of the respondent.
In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of proof passes to the respondent to show that he does indeed have such a right or interest (see, inter alia, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
In this case, the Complainant has put forward a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondents to use its ALIEN SPORT trademark, nor is there anything to suggest that the Respondents have been commonly known by a name corresponding to the domain name.
There is nothing on the record to indicate that the Respondents might enjoy a right or legitimate interest in the disputed domain name. Moreover, although the late Response did not refer to paragraph 4(c)(1) of the Policy, the Respondents' use of the disputed domain name to host links to third-party commercial websites from a date preceding notice of the Complaint use does not, in this case, constitute a bona fide offering of goods capable of conferring a legitimate right or interest under that paragraph. The Respondents have relied on the identity of the disputed domain name with the Complainant's ALIEN SPORT trademark as a means of enticing visitors to a website hosting links to competitors of the Complainant. Use of a domain name identical to a complainant's registered trademark to offer sponsored links to a complainant's competitors is inherently misleading and is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(1) (see e.g., F. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005, Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946, and F. Hoffmann-La Roche AG v. Andrey Radashkevich / Domain Admin, PrivacyProtect.org, WIPO Case No. D2008-0149).
The Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name.
Under paragraph 4(b)(iv) of the Policy, a panel may find that a domain name was registered and used in bad faith where a respondent has used it in an intentional attempt to attract Internet users for commercial gain 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 it.
In this case, the Complainant has made out its case under paragraph 4(b)(iv) of the Policy. The disputed domain name is identical to the Complainant's registered ALIEN SPORT trademark, and is inherently likely to attract Internet users seeking the Complainant. Visitors to the Respondents' website are presented with links to websites promoting goods of the Complainant's competitors. The Complainant alleges, and the Respondents have not denied, that the Respondents derive revenue from Internet users clicking through to the linked websites.
The Complainant's long-standing use of ALIEN SPORT and other ALIEN trademarks for golf clubs and accessories and the Respondents' references to ALIEN-branded golf equipment on the linked website strongly point to awareness by the Respondents of the Complainant's trademarks. Abadaba S.A.'s denial of such knowledge is implausible given the inherent distinctiveness of the ALIEN SPORT and ALIEN marks for golf equipment, the use of the disputed domain name to promote competing golf equipment vendors and the utter lack of any other credible basis for the Respondents' adoption of the disputed domain name.
Taking all this into account, the Panel finds that the Respondents have used the disputed domain name intentionally to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's ALIEN SPORT trademark. Use of a domain name that is identical or confusingly similar to a complainant's trademark to offer sponsored links to third parties has long been regarded as registration and use in bad faith under paragraph 4(b)(iv) of the Policy (see, inter alia, Pardes Institute of Jewish Studies v. Hans Schultz LLC, WIPO Case No. D2008-0648 and McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353).
The Complainant also cites five prior UDRP cases in which panels have ordered the transfer of domain names from Domain Privacy LTD (Xcentric Ventures, L.L.C. v. Domain Privacy LTD c/o DNS Admin, FA 1087178 (Nat. Arb. Forum November 20, 2007); Maid to Perfection Corp. v. Domain Privacy LTD, FA 1055131 (Nat. Arb. Forum September 19, 2007); Baylor University v. Domain Privacy Ltd. c/o DNS Admi, FA 1189966 (Nat. Arb. Forum June 24, 2008); Tucker Carlson v. Domain Privacy Ltd, WIPO Case No. D2008-0474; and Lumber Liquidators, Inc. v. Click Cons. Ltd. Domain Privacy Ltd DNS Admin, WIPO Case No. D2007-1846).
In its supplemental submission, the Complainant also points to six further UDRP decisions ordering the transfer of domain names from Abadaba S.A. (Rediff.com India Ltd. v. Abadaba S.A., Domain Admin, WIPO Case No. D2008-0803; Forest Laboratories Inc. v. Abadaba S.A., Domain Admin, WIPO Case No. D2008-0413; MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325; Banco do Brasil S.A. v. The Tidewinds Group, Inc., Abadaba S.A. Domain Admin, WIPO Case No. D2007-1657; Eldorado Stone Operations, LLC v. Abadaba S.A., Domain Admin, WIPO Case No. D2007-1580; and Sanofi-Aventis v. Abadaba S.A., WIPO Case No. D2006-1611).
In the Panel's view, these multiple findings of bad faith registration and use against both Respondents demonstrate that the Respondents have engaged in a pattern of bad faith registration and use. The Panel finds it more likely than not that the Respondents registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Panel finds that the disputed domain name was registered and has been used in bad faith under paragraph 4(b)(ii) of the Policy, as well.
In its supplemental submission, the Complainant also relies on an unsolicited offer by Abadaba S.A. to sell the disputed domain name to the Complainant for US 10,000 after the Complaint was filed. That offer was made to the Complainant's attorneys via an attorney representing Abadaba S.A., although the latter's real identity was obscured because its attorney misidentified his client as “Abadama S.A.” The Complainant asserts that this offer is further evidence of registration and use of the domain name in bad faith under paragraph 4(b)(i) of the Policy.
It is clear from the annexes to the Complainant's supplemental brief that the offer to sell the disputed domain name was made in a communication that was expressly stated to be “for settlement purposes only.” There have been diverging views as to whether panels should consider such “without prejudice” communications in UDRP proceedings. Some panels have excluded such communications as privileged, particularly where made between legal representatives (see inter alia Donna Karan Studio v. Raymond Donn, WIPO Case No. D2001-0587, The London Marathon Limited v. Websitebrokers Limited, WIPO Case No. D2001-0157, and the dissenting opinion in Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079).
Other panels have, however, admitted such communications on the basis that statements made in settlement discussions are often the only means of demonstrating a respondent's bad faith (see, inter alia, Spirit Airlines, Inc. v Spirit Airlines Pty. Ltd ., WIPO Case No. D2001-0748; McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd, WIPO Case No. D2004-0078; and Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
In the Panel's view, in the absence of any guidance in the Rules there should be no inflexible rule excluding consideration of settlement communications in UDRP proceedings in appropriate circumstances. In this case, however, the Panel has already found registration and use of the disputed domain name in bad faith under paragraphs 4(b)(ii) and (iv) of the Policy. No useful purpose will be served by examining whether the evidence of Abadaba S.A.'s offer to sell should be admissible, therefore, and in the interests of procedural economy the Panel declines to do so.
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 name, <aliensport.com>, be transferred to the Complainant.
Dated: February 22, 2009