WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sidney J. Cockerham, Instructor Certification Program LLC v. National Tennis Academy, Inc.

Case No. D2013-0434

1. The Parties

Complainant is Sidney J. Cockerham, Instructor Certification Program LLC of Dallas, Texas, United States of America, represented internally.

Respondent is National Tennis Academy of Orlando, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain names <nationaltennisacademy.com> and <nationaltennisacademyflorida.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2013. On March 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 28, 2013.

Respondent sent an email communication to the Center on March 28, 2013. The Center invited Complainant to comment by April 5, 2013. Complainant sent an email communication to the Center on April 5, 2013. On April 9, 2013, Complainant submitted a supplemental filing.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on April 10, 2013. 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 April 24, 2013, the Panel issued Administrative Panel Procedural Order No. 1 ordering Complainant to file an Amended Complaint related to the April 9, 2013 supplemental filing. The Center formally notified the parties of the Administrative Panel Procedural Order No. 1 and obtained registrar verification for the domain name that was added. On April 25, 2013 Complainant filed an Amended Complaint adding allegations relating to the <nationaltennisacademyflorida.com> domain name. Respondent was again notified of the amended Complaint and advised of the May 15, 2013 deadline to respond, but, once again, it did not submit a timely response. Accordingly, the Center notified Respondent’s failure to comply with the deadline indicated in the Administrative Panel Procedural Order No. 1 for the submission of its Response on May 16, 2013. Respondent sent an email communication to the Center on May 16, 2013, stating, “Again I have changed the name for the third time this is ridiculous!!” However, the <nationaltennisacademy.com> domain name presently resolves to a webpage promoting the North American Tennis Academy.

Because Respondent defaulted, the Panel has carefully reviewed the record to ensure that Respondent was given a fair opportunity to submit a response. The Panel finds that the Center properly discharged its obligation to provide fair notice to Respondent under paragraph 2(a) of the Rules. The Center attempted to notify Respondent of the Complaint by email using all contact information disclosed in the registrar verifications, in the publicly available WhoIs records and on any websites to which the disputed domain names resolved. Respondent corresponded with the Center about the case, although it made no effort to file any response. It thus appears that Respondent received actual notice.

4. Factual Background

Complainant is a tennis teacher organization that has continuously provided educational services to consumers throughout the world since 1981. The service mark NATIONAL TENNIS ACADEMY has been used in commerce continuously since inception and in advertising in World Tennis Magazine (now defunct) and Tennis Magazine. Complainant’s website found at “www.usnta.com” was established in 1999 and has had a continuous Internet presence since that date.

Complainant owns:

U.S. Service Mark Registration No. 1229055, registered March 1, 1983 for NATIONAL TENNIS ACADEMY;

U.S. Service Mark Registration No. 4278816, registered January 22, 2013 for NATIONAL TENNIS ACADEMY; and

U.S. Service Mark Registration No. 1236787, registered May 3, 1983 for NTA.

Respondent registered the disputed domain name <nationaltennisacademy.com> on November 18, 2008 and the disputed domain name <nationaltennisacademyflorida.com> on March 12, 2013.

Respondent used the disputed domain name <nationaltennisacademy.com> to resolve to a webpage promoting its tennis school, apparently for many years and perhaps as early as 2009. Complainant has submitted a copy of Respondent’s webpage. The disputed domain name <nationaltennisacademy.com> presently resolves to a webpage promoting the North American Tennis Academy. However, Complainant has not submitted any evidence of the use of the disputed domain name <nationaltennisacademyflorida.com>.

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:

Complainant owns the above mentioned United States trademark registrations for NATIONAL TENNIS ACADEMY. The trademark NATIONAL TENNIS ACADEMY has been used continuously since 1981.

The disputed domain name <nationaltennisacademy.com> is exactly the same as Complainant’s registered service marks and creates a likelihood of consumer confusion.

The disputed domain name <nationaltennisacademyflorida.com> is the same as Complainant’s registered service marks but with the term “florida” added.

Actual confusion has occurred.

With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:

Respondent is in no manner whatsoever associated with or connected to Complainant nor has Respondent given permission or authorization for Respondent to provide tennis services under its NATIONAL TENNIS ACADEMY service mark. There is no indication that Respondent intends to make any use of, or has made any preparations to use, the disputed domain name in connection with a "bona fide offering of goods or services." Respondent offers competing goods and services by using an identical mark NATIONAL TENNIS ACADEMY.

Respondent’s intention to use the disputed domain name to offer similar services to those provided by Complainant does not represent a "legitimate non-commercial or fair use of the domain name". Respondent is clearly intending to use its website for commercial gain. To the best of Complainant’s knowledge, Respondent has no service mark applications or registrations anywhere for the words “National Tennis Academy.”

The general public has come to recognize NATIONAL TENNIS ACADEMY as an established, trusted, and successful service organization. Respondent intends to deliberately attempt to divert customers away from Complainant's website by using an identical and/or confusingly similar name to provide confusingly similar or identical goods and services. Respondent is intending to use Complainant's well-known name and reputation to attract customers to its website and thereby to knowingly mislead Internet users and divert business from Complainant.

With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:

Complaint commenced use of its service mark NATIONAL TENNIS ACADEMY in 1981 for providing tennis education. Complainant exhibits and presents at tennis teacher conferences and advertises consistently in tennis publications and online under its NATIONAL TENNIS ACADEMY mark. As a result of the extensive and prominent use of the mark, NATIONAL TENNIS ACADEMY had become a famous mark in the United States prior to the registration of the disputed domain names.

Respondent knew or should have known about Complainant’s mark since the mark refers to tennis services and Respondent has been in the tennis industry for the past twenty years.

Respondent has “registered the domain name primarily for the purpose of disrupting the business of a competitor.” By providing identical goods and/or services to those of Complainant, Respondent intends to disrupt Complainant's business by promoting a website using the NATIONAL TENNIS ACADEMY service mark.

Consumers looking for an instructor under the mark NATIONAL TENNIS ACADEMY or looking to become a member under the mark NATIONAL TENNIS ACADEMY may in the future be inadvertently led to Respondent's website and may not continue to search for the genuine website at “www.usnta.com”.

The consumer may proceed instead through Respondent's website, or else become confused and abandon the search altogether thus disrupting Complainant’s business by leading to a loss of potential members and potential clients for our instructors. On April 20, 2012 Complainant’s attorney sent a certified letter to Respondent outlining its infringement of service mark rights concerns. Respondent never responded to the letter. Respondent’s failure to respond supports the inference that the registration and the use of the disputed domain names have been in bad faith.

B. Respondent

Respondent did not timely submit a formal reply to Complainant’s contentions.

Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”).

6. Discussion and Findings

As noted above, Respondent did not timely submit a formal reply to Complainant’s contentions. After the deadline, Respondent wrote to the Center stating that it had added a word to the end of the phrase “National Tennis Academy” in a newly registered disputed domain name. The newly registered disputed domain name is <nationaltennisacademyflorida.com>. After Complainant amended the Complaint to add the disputed domain name <national tennis academyflorida.com> and again, beyond the deadline to respond, Respondent again wrote to the Center stating that it had again “changed the name”.

A. Identical or Confusingly Similar

Given Complainant’s trademark registrations and long use of the NATIONAL TENNIS ACADEMY trademarks in the United States and worldwide, the Panel finds that Complainant has trademark rights in the NATIONAL TENNIS ACADEMY mark.

The Panel also finds that the disputed domain names are either identical or confusingly similar to Complainant’s NATIONAL TENNIS ACADEMY marks. The disputed domain name <nationaltennisacademy.com> incorporates Complainant’s entire trademark and differs from Complainant’s registered mark only by the addition of the gTLD “.com”. The disputed domain name <nationaltennisacademyflorida.com> incorporates Complainant’s entire trademark and differs from Complainant’s registered mark only by the addition of the geographic term “florida” and the gTLD “.com”. The use of another’s trademark in connection with a geographic term can increase the confusing similarity. In Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658, in finding the domain name <holidayinnmichigan.com> confusingly similar to HOLIDAY INN, the panel stated: “the addition of the geographic term ‘Michigan’ does not prevent a finding of confusing similarity. In fact, the addition of the suffix ‘Michigan’ is apt to suggest that the Complainant’s goods and services are provided in that location.” The addition of the “.com” TLD in both of Respondent’s disputed domain names likewise does nothing to avoid confusion. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”).

The Panel finds that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights. Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

In order for Respondent to demonstrate rights or legitimate interests in the disputed domain names, it must show:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. It is true that Respondent has been using the disputed domain name <nationaltennisacademy.com> for several years to promote its school that, for all that appears, offered real world tennis instruct to students taking lessons at its facility in Orlando. But Respondent has not taken the trouble to respond and deny Complainant’s assertion that Respondent knew of its rights and intentionally sought to trade off Complainant’s reputation. Intentional infringement of another’s rights cannot be considered bona fide use. Office Holdings Limited v. Hocu To d.o.o. and Office Shoes d.o.o., WIPO Case No. D2009-1277 (intentional infringement not bona fide use).

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain names.

With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names.

The same analysis applies with greater force to the disputed domain name <nationaltennisacademyflorida.com>. Respondent acquired this domain name only after this proceeding commenced, so the paragraph 4(c)(i) does not apply. And there is no basis for Respondent to rely on paragraphs 4(ii) or (iii).

It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a domain name. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to the respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The ultimate burden of proof, however, remains with complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141.

The Panel finds that the above facts establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names. Moreover, Respondent has not rebutted such a prima facie showing and therefore Complainant has succeeded with respect to this Policy element.

C. Registered and Used in Bad Faith

Complainant’s allegations of bad faith registration and use are not contested. Also, it is highly unlikely that Respondent was unaware of Complainant’s trademark rights when Respondent registered the disputed domain names on November 18, 2008 and March 12, 2013 in view of the fact that Complainant has been using its mark since 1981, especially since, as Complainant shows, Respondent’s representative states on the website that he has been immersed in the tennis world for many years.

Under the Policy, it is evidence of bad faith that, “by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the Policy.

In the present case, the disputed domain name <nationaltennisacademy.com> linked to Respondent’s website found at “www.nationaltennisacademy.com” at the time that the Complaint was filed. The evidence shows that Respondent’s website at “www.nationaltennisacademy.com” provides competing services under Complainant’s NATIONAL TENNIS ACADEMY mark.

Unfortunately, Complainant’s amended pleadings are deficient with respect to the disputed domain name <nationaltennisacademyflorida.com>. Although Complainant’s Amended Complaint included new allegations to satisfy Policy paragraphs 4(a)(i) and (ii) with respect to this disputed domain name, there are no additional allegations addressed to Policy paragraph 4(a)(iii). Neither does Complainant offer any evidence about Respondent’s use of this disputed domain name. In particular, there is nothing of record that informs the Panel about whether the new disputed domain name resolves to Respondent’s website. Moreover, the Administrative Panel Procedural Order No. 1 allowed Complainant to file an Amended Complaint, “providing any additional information pursuant to paragraph 3 of the Rules, as the Panel finds the supplemental filing inadequate in addressing the three elements of the Policy.” Despite this, Complainant has not supplied any additional information to satisfy paragraph 4(a)(iii). As a consequence, Respondent’s default triggers no adverse inferences as to the required bad faith registration and use of this disputed domain name.

Accordingly, the Panel finds that the disputed domain name <nationaltennisacademy.com> was registered and is being used in bad faith. However, Complainant has not met its burdens with respect to the disputed domain name <nationaltennisacademyflorida.com>.

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 <nationaltennisacademy.com> be transferred.

However, the Complaint is denied with respect to the disputed domain name <nationaltennisacademyflorida.com>.

Lawrence K. Nodine
Sole Panelist
Date: May 24, 2013