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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Garibay Sports, LLC and Jonathan Garibay v. Domains by Proxy, LLC / Wasea Qubadi

Case No. D2018-1789

1. The Parties

The Complainants are Garibay Sports, LLC and Jonathan Garibay of Los Angeles, California, United States of America (“United States”), represented by Law Office of David J. Habib, United States.

The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States / Wasea Qubadi of Los Angeles, California, United States.

2. The Domain Name and Registrar

The disputed domain name <garibaysports.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2018. On August 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 8, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on August 15, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on August 22, 2018.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2018.

The Center appointed Lynda M. Braun as the sole panelist in this matter on September 19, 2018. 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 Complainants own a business that specializes in the sale of sports equipment for boxing and martial arts. The Complainants have been in business since June 1, 2004, having used the common law trademark GARIBAY SPORTS in connection with boxing equipment and related goods and accessories. On June 5, 2018, the Complainant received a federal trademark registration for GARIBAY SPORTS, United States Reg. No. 5,484,254, in International Class 25 for boxing shoes, and in International Class 28 for sports equipment for boxing and martial arts, namely, boxing gloves, boxing bags, punching mitts, belly protectors, groin protectors and shin guards (together, the common law and federally registered marks are hereinafter referred to as the “GARIBAY SPORTS Mark”). The Complainants have used the GARIBAY SPORTS Mark as a common law mark and then as a federally registered trademark since 2004, and thus, have achieved fame and notoriety for their boxing-related products.

The Respondent is a competitor of the Complainants, with a store named “Pro Fight Sports Corporation” that sells boxing equipment and other sports products. On November 12, 2009, the Respondent registered the domain name <profightshop.com> for its business. Almost four years later, on September 19, 2013, the Respondent registered the Disputed Domain Name. The Disputed Domain Name resolves to the website owned by the Respondent, “www.profightsports.com”.

The Complainant’s counsel sent a cease-and-desist letter to the Respondent, informing the Respondent that he was infringing the Complainants’ rights by using the Disputed Domain Name. The Respondent did not reply to the letter.

5. Parties’ Contentions

A. Complainant

The Complainants contend that:

- The Disputed Domain Name is confusingly similar to the trademark in which the Complainants have rights;

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

- The Disputed Domain Name was registered and is being used in bad faith; and

- The Complainants seek the transfer of the Disputed Domain Name from the Respondent to the Complainants in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In order for the Complainants to prevail and have the Disputed Domain Name transferred to the Complainants, the Complainants must prove the following (Policy, paragraph 4(a)):

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first issue is whether the Complainants have protectable rights in the GARIBAY SPORTS Mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.3.

Paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which the complainant has rights and does not expressly limit the application of the Policy to a registered trademark or service mark. Therefore, the fact that in this case the Complainants did not have a registered trademark until 2018 for the GARIBAY SPORTS Mark does not preclude a finding that the Complainants had established trademark rights in that name for purposes of the Policy. See Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322. See also WIPO Overview 3.0, section 1.1.1. Additionally, the Panel asserts that common law trademark rights exist when a party demonstrates that there is sufficient goodwill and reputation in a name – and therefore acquired distinctiveness – to establish sufficient association of the name with the party itself. Id.

It is uncontroverted that the Complainants had established common law rights in the GARIBAY SPORTS since the first use date of June 1, 2004 and onward, especially since the Respondent, facing competition from the Complainants, registered in 2013 the Disputed Domain Name that incorporates the Complainants’ GARIBAY SPORTS Mark.

In light of the above, the Panel accepts that the Complainants have provided adequate grounds for a finding that the Complainants have sufficient goodwill to have established common law trademark rights (prior to acquiring the federal trademark registration) in the GARIBAY SPORTS Mark.

Having determined that the Complainants have both common law and registered rights in the GARIBAY SPORTS Mark, the second issue is whether the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights. The Disputed Domain Name consists of the GARIBAY SPORTS Mark followed by the generic Top-Level Domain (“gTLD”) “.com”. The Panel finds that the Disputed Domain Name <garibaysports.com> is identical to the Complainants’ GARIBAY SPORTS Mark (both common law and federally registered trademarks) as the Disputed Domain Name incorporates the Complainants’ GARIBAY SPORTS Mark in its entirety.

Moreover, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainants.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a 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, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainants have made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainants’ prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainants. Furthermore, the Complainants have not authorized, licensed or otherwise permitted the Respondent to use their trademark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Based on the use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainants.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainants have demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.

First, the Respondent has attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ GARIBAY SPORTS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. The Respondent knew that the Complainants had been known for boxing equipment in the community before the Respondent began its own sports equipment business. The Respondent registered the Disputed Domain Name to profit from the Complainants’ good will, name and reputation by interfering with and disrupting the Complainants’ business. The Respondent did so by reflecting the Complainants’ trademark in the Disputed Domain Name and intentionally diverting Internet users seeking the Complainants’ good to the Respondent’s website. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name.

In light of the Complainants’ demonstration of common law mark rights at the time of the registration of the Disputed Domain Name, the fact that the Complainants did not yet have registered rights in GARIBAY SPORTS does not prevent a finding of registration of the Disputed Domain Name in bad faith. See WIPO Overview 3.0, section 3.8.2. Second, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainants’ GARIBAY SPORTS Mark for commercial gain.

Third, the Respondent knew or should have known of the Complainants’ rights in its GARIBAY SPORTS Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name to resolve to its own website. Thus, it strains credulity to believe that the Respondent had not known of the Complainant or its GARIBAY SPORTS Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainants.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <garibaysports.com>, be transferred to the Complainants.

Lynda M. Braun
Sole Panelist
Date: September 21, 2018

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