WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Freeline Sports, Inc. v. Jack Chiang / Domain Whois Protection Service Whois Agent

Case No. D2010-1817

1. The Parties

The Complainant is Freeline Sports, Inc. of Irvine, California, United States of America, represented by Knobbe, Martens, Olson & Bear, LLP, United States of America.

The Respondent is Jack Chiang, Jinan, Shandong Province, the People’s Republic of China; Domain Whois Protection Service Whois Agent of the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <buyfreelineskates.com> is registered with Jiangsu Bangning Science & technology Co. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2010. On October 28, 2010, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd. a request for registrar verification in connection with the disputed domain name. On October 29, 2010, Jiangsu Bangning Science & technology Co. Ltd. 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 transmitted an email communication to the Complainant on November 2, 2010, providing the Complainant with the registrant's name and contact information, as disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 6, 2010. On November 2, 2010, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 5, 2010, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceedings commenced on November 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2010.

The Center appointed Jonathan Agmon as the sole panelist in this matter on December 6, 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

Founded in 2003, the Complainant, Freeline Sports, Inc., is a manufacturer, distributer and seller of unique personal transportation devices, commonly referred to as a kind of skate.

The Complainant markets its products directly and maintains a network of licensed resellers and distributors.

Since 2004, the Complainant has been using the FREELINE and FREELINE logo marks in connection with its goods.

The Complainant is the owner of numerous trademark registrations and applications for the FREELINE mark around the world. For example: United States ("U.S.") trademark registration No. 3292741 – FREELINE F (logo), with the registration date of September 18, 2007; U.S. trademark application No. 85109543 – FREELINE, with the filing date of August 17, 2010; U.S. trademark application No. 85109526 – F (logo), with the filing date of August 17, 2010; Community trademark application No. 9345612 – FREELINE, with the application date of September 1, 2010; Community trademark application No. 9345521 –F (logo), with the filing date of September 1, 2010; Japanese trademark application No. 2010-068974 – FREELINE, with the application date of September 1, 2010; Australian trademark application No. 1386660 – FREELINE F (logo), with the filing date of October 4, 2010; Canadian trademark application No. 1498118 – FREELINE F (logo), with the filing date of October 1, 2010; New Zealand trademark application No. 831301 – FREELINE F (logo), with the filing date of October 1, 2010; and others.

Through extensive use around the world, the FREELINE trademark has generated vast good will and has become widely known in connection with skates.

The Complainant also developed a formidable presence on the Internet and is the owner of several domain names, which contain the name "freeline". For example: <freelineskates.com> and <freelineskates.com.au>. The Complainant is using these domain names in connection with its activities.

The disputed domain name <buyfreelineskates.com> was registered on August 2, 2010.

The disputed domain name resolves to an error page, which displays the following announcement: “Internet Explorer cannot display the webpage”.

Until recently, the disputed domain name led Internet users to another website that engaged in the marketing of various skates, some of which displayed along the Complainant's FREELINE mark.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to the FREELINE trademark, in which the Complainant has rights, seeing that it incorporates the FREELINE trademark as a whole. The Complainant further argues that the addition of the words "buy" and "skates" are insufficient to avoid confusing similarity between the FREELINE trademark and the disputed domain name.

The Complainant further argues that its FREELINE trademark is a well-known mark, recognized solely with the Complainant and with its operation.

The Complainant further argues that the Respondent does not make legitimate use in the disputed domain name.

The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its FREELINE trademark and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent is not generally known by the disputed domain name, or has acquired trademark rights in the term "freeline".

The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.

The Complainant further argues that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks.

The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the FREELINE trademark and products at the time it registered the disputed domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Issue – Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

a) The disputed domain name <buyfreelineskates.com> consists of Latin letters, rather than Chinese letters;

b) The disputed domain name <buyfreelineskates.com> includes words in the English language, namely "buy" and "skates";

c) The website, to which the disputed domain name used to resolve, displayed goods in the English language;

d) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of the proceeding.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations and applications for the mark. For example: U.S. trademark registration No. 3292741–FREELINE F (logo), with the registration date of September 18, 2007; U.S. trademark application No. 85109543 – FREELINE, with the filing date of August 17, 2010; U.S. trademark application No. 85109526 – F (logo), with the filing date of August 17, 2010; Community trademark application No. 9345612 – FREELINE, with the application date of September 1, 2010; Community trademark application No. 9345521–F (logo), with the filing date of September 1, 2010; Japanese trademark application No. 2010-068974 – FREELINE, with the application date of September 1, 2010; Australian trademark application No. 1386660 – FREELINE F (logo), with the filing date of October 4, 2010; Canadian trademark application No. 1498118 – FREELINE F (logo), with the filing date of October 1, 2010; New Zealand trademark application No. 831301 – FREELINE F (logo), with the filing date of October 1, 2010; and others.

The disputed domain name <buyfreelineskates.com> consists of the main element in the registered FREELINE F trademark, namely the term “freeline”. The disputed domain name differs from the FREELINE trademark by the additional words "buy" and "skates", and the additional gTLD “.com”.

The additional word "buy" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's FREELINE trademark, as it is a descriptive element that refers to the marketing of products, and as such is insignificant. The word "skates" is also insufficient to avoid confusing similarity, as it is a non-significant element that refers directly to the goods regularly sold by the Complainant under the FREELINE trademark.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.

The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its FREELINE trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the FREELINE F (logo) trademark since the year 2007. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name is resolved to.

The disputed domain name used to lead Internet users to a website that engages in the marketing of skates, some of which were displayed along the Complainant FREELINE F mark. The Respondent’s prior use of the Complainant's mark to promote similar or identical goods to the goods being offered by the Complainant clearly evidences that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in its well-known FREELINE trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the use the Respondent makes of the disputed domain name to offer similar goods to the ones being offered by the Complainant constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450).

Furthermore as indicated above, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name and the confusing similarity between the disputed domain name and the Complainant's mark, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 disputed domain name <buyfreelineskates.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: December 19, 2010.