WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rawlings Sporting Goods Company, Inc. v. Standard
Bearer Enterprises Limited
Case No. D2010-1127
1. The Parties
The Complainant is Rawlings Sporting Goods Company, Inc. of St. Louis, Missouri, United States of America, represented by Stinson Morrison Hecker LLP, United States of America.
The Respondent is Standard Bearer Enterprises Limited of St. Johns, Antigua and Barbuda.
2. The Domain Name and Registrar
The disputed domain name <rawlingsfootball.com> is registered with NameKing.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2010. On July 8, 2010, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the disputed domain name. On July 8, 2010, NameKing.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” 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 the Respondent of the Complaint, and the proceedings commenced on July 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Complainant of the Respondent’s default on July 30, 2010.
The Center appointed Hugues G. Richard as the sole panelist in this matter on August 9, 2010. 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.
4. Factual Background
The Complainant is based in the United States (U.S.) and has been using the trademark RAWLINGS since at least 1902, according to its U.S. Trademark Registration No. 1,149,932, in connection with a wide variety of sporting equipment, including multiple items relating specifically to football.
The Complainant is the proprietor of a number of U.S. federal trademark registrations for RAWLINGS in plain and stylized forms, including registration nos. 802,164; 412,343; and 1,149,932, dating from as early as 1945 and all pre-dating the registration of the disputed domain name, details of which were annexed to the Complaint. The Complainant also referred to its ownership of numerous foreign registrations for RAWLINGS including in Australia, Canada, Spain, France, the People’s Republic of China, Japan, the Republic of Korea, Taiwan, Province of China, Mexico, Puerto Rico, Unincorporated Territory of the United States, and the Bolivarian Republic of Venezuela.
The disputed domain name was registered on August, 10, 2006. It has been used and is still used to redirect Internet traffic to other websites, including many competitors’ websites.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its registered trademarks in that the disputed domain name includes the Complainant’s RAWLINGS trademark in its entirety. The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name firstly because the Respondent is not affiliated with the Complainant, and secondly because the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, since it is using it to redirect Internet traffic to other websites for commercial gain. Finally, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. In support of this argument, the Complainant mentions that the Respondent created confusion to attract Internet users to its website for commercial gain. The Complainant further asserts the Respondent intended to sell, rent or otherwise transfer the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, as the home page of the disputed domain name included a link titled “Inquire About This Domain”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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.
As a preliminary finding, the Panel finds that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings and that the failure of the Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate.” Furthermore, paragraph 15(a) of the Rules provides that “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Since the Respondent has not submitted any evidence, the Panel will render its decision on the basis of the uncontroverted evidence supplied by the Complainant.
A. Identical or Confusingly Similar
The Complainant has proved ownership of registered trademark rights in RAWLINGS in plain and stylized forms. The RAWLINGS trademark appears in its entirety in the disputed domain name (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung fu Yea Enterprises, Inc., WIPO Case No. 2000-0047, in which the panel held that, “When a domain name incorporates, in its entirety, a distinctive mark, [it] creates sufficient similarity between the mark and the domain name to render it confusingly similar.”).
The remaining element of the disputed domain name is “football.” This element is directly descriptive of wares listed in the Complainant’s trademark registrations for RAWLINGS. The mere addition of a descriptive term to a trademark does not avoid confusing similarity between the trademark and a disputed domain name, particularly where the descriptor is in some way relevant to the Complainant’s business (see American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489).
For the above reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered RAWLINGS trademark.
B. Rights or Legitimate Interests
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on complainants, but panels have long recognised that the information needed to prove such a right or interest is normally in the possession of respondents. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that the Respondent has used the disputed domain name for pay-per-click landing pages hosting links to third-party commercial websites operating inter alia in the sports industry. There is no question that the attractiveness of the disputed domain name as an address for pay-per-click landing pages is bound up in its combination of the Complainant’s distinctive trademark with a descriptive word directly related to the Complainant’s business. In the Panel’s view, the Respondent’s unauthorised use of the disputed domain name incorporating the Complainant’s registered trademark and relevant descriptors in order to attract Internet users to pay-per-click landing pages promoting competing business is not a bona fide commercial use (see Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-1141).
The Complainant fulfilled its prima facie burden, the Respondent failed to respond and there is nothing in the evidence to suggest that the Respondent has any right or legitimate interest in using the disputed domain name which includes the Complainant’s trademark. As such, the Panel finds the Respondent has no rights or legitimate interests in the use of the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, the Panel is entitled to find both registration and use in bad faith where there is evidence that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 it.
The evidence demonstrates that the pay-per-click website using the disputed domain name not only linked to competitor’s websites, but also linked to the Complainant’s official website “www.rawlingsgear.com”. This supports the likelihood that the Respondent knew of the Complainant’s RAWLINGS trademarks and was using them in bad faith in order to create confusion and attract Internet users for commercial gain (see Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774; Hertz System, Inc. v. Thomas Roche, WIPO Case No. D2009-0981).
The Panel finds that the Respondent’s conduct constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The website under the disputed domain name also included a link titled “Inquire About This Domain”, which led to an online form, which held the option to make an offer for the disputed domain name. This is further evidence of registration and use in bad faith under paragraph 4(b)(i) (see Mamar, Inc. v. Order Your Domains, WIPO Case No. D2005-1163: That panel found a link titled “Inquire about this domain” to be “a thinly veiled solicitation of offers to purchase the Domain Name, and thus a bad faith registration and use under paragraph 4(b)(i) of the Policy.”)
The Panel also notes this is not the first time the Respondent is found to have registered and used a domain name in bad faith (see Ballard Designs, Inc. v. Standard Bearer Enterprises Ltd., WIPO Case No. D2009-1322).
Accordingly, the Panel concludes that the Complainant has shown the disputed domain name to have been registered and used 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 name <rawlingsfootball.com> be transferred to the Complainant.
Hugues G. Richard
Dated: August 12, 2010