WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NBA Properties, Inc. v. Huang Li Technology Corp. c/o Dynadot Privacy

Case No. D2013-0011

1. The Parties

Complainant is NBA Properties, Inc. of New York, New York, United States of America, represented by Covington & Burling, United States of America.

Respondent is Huang Li Technology Corp. c/o Dynadot Privacy of San Mateo, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nbafit. com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2013. On January 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 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 for the disputed domain name.

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 January 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 5, 2013.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 14, 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.

4. Factual Background

Complainant, NBA Properties, Inc., is the owner of registration of the word trademark NBA FIT on the Principal Register of the United States Patent and Trademark Office (“USPTO”), registration number 3,652,271, registered July 7, 2009, in international class (“IC”) 29, covering “fruit based snack food”, and; is the owner of a registration of a word and design trademark incorporating the term “NBA FIT”, registration number 3,652,273, registered July 7, 2009, covering the same goods. Complainant is the owner of numerous registrations at the USPTO for the word service mark and trademark NBA, including (but not limited to), registration number 864,034, registered January 21, 1969, in IC 42, covering association services promoting the interest of basketball clubs; and registration number 1,505,559, registered September 27, 1988, in ICs 6, 14, 16, 24, 25 and 28, covering various forms of sports-related merchandise.¹

Complainant serves as the marketing and licensing arm of the National Basketball Association (“NBA”), which it describes as “the preeminent men’s basketball league in North America and one of the most well-known in the world”. Sporting competitions promoted by Complainant under the NBA service mark and trademark (hereinafter “trademark”) are viewed by millions of television viewers, including over NBA TV, the association’s own channel. Complainant maintains an active commercial website at “www.nba.com”, which averages tens of millions of page views per day. Complainant has provided evidence that its principal website is among the most heavily visited in the United States and worldwide.

NBA FIT is an NBA initiative which, according to Complainant, “promotes physical activity and healthy living to more than 1 million children and families through grassroots programs and events, products and promotional opportunities. Over 1 million kids, adults, and families participate in NBA FIT.” The NBA FIT program is displayed on the website of the NBA, inter alia, at “http://www. nba. com/nbafit/”, with references to fitness and nutrition, among other elements.

According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on August 29, 2009. The disputed domain name was transferred into the Registrar on April 11, 2011, and the Registrar reported “It is unclear if the Respondent owned the domain prior to this date.”

Complainant has provided printouts of screenshots of a website addressed by the disputed domain name, headed with “Nbafit. com”. Although the precise layout has varied over time, the format of the website is that of a “standard” link farm parking page that incorporates links to a variety of services and goods relating to sports training and equipment, including to vendors of “NBA Basketball Gear”, as well as to unrelated services and goods, such as links to fitness centers and Caribbean vacations. Complainant has provided a screenshot of a click through to a third-party vendor website, “FansEdge”, that offers “Welcome to Our NBA Shop”, and a variety of goods (such as team jerseys) bearing identifiers of NBA teams.

Complainant transmitted by email and postal mail a cease and desist and transfer demand to Respondent dated January 23, 2012. According to Complainant, Respondent did not reply to this communication.

Complainant has provided information indicating that Respondent has been involved as respondent in a number of UDRP administrative proceedings in which it has been found to have registered trademarks of third parties in domain names and has been subject to transfer orders. The decisions are: 02 Holdings Limited v. Huang Ii Tech. Corp c/o Dynadot Privacy, WIPO Case No. D2012-0807; Barclays Bank PLC v. Huang Li Technology Corp., WIPO Case No. D2011-2191; Barclays Bank PLC v. Huang Li Technology Corp., WIPO Case No. D2011-2008; The American Automobile Association., Inc. v. Huang Li Tech Corp c/o Dynadot Privacy, WIPO Case No. D2011-1755; and AOL LLC v. Huang Li Technology CorpDomain Admin, NAF Case No. 1296625.

The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the trademarks NBA FIT and NBA as evidenced by registration at the USPTO, and that it has used those trademarks widely in the United States and other countries. Complainant argues that its NBA trademark is well-known in the United States and other countries. Complainant states that it has used the NBA FIT trademark from at least as early as February 13, 2007.

Complainant contends that the disputed domain name is identical to its NBA FIT trademark, and confusingly similar to its NBA trademark.

Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has not authorized, licensed or consented to Respondent’s use of the disputed domain name; (2) there is no evidence that Respondent is commonly known by the disputed domain name, and Respondent does not own any trademark rights for NBA or NBA FIT, and; (3) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use, inter alia, because Respondent is using the disputed domain name to operate a link farm parking page offering goods and services competitive with those of Complainant.

Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent is using the disputed domain name to divert Internet users to its website for commercial gain by taking advantage of consumer association with Complainants well-known trademark, and that Respondent must have been aware of Complainant’s trademark when it registered the disputed domain name; (2) Respondent’s registration and use of the disputed domain name is disrupting Complainant’s business; (3) the fact that Respondent must have been well aware of Complainant’s well-known trademark when it registered the disputed domain name is further evidence of bad faith; (4) Respondent’s registration of the disputed domain name incorporating Complainant’s well-known trademark suggests opportunistic bad faith, and; (5) Respondent has a history of registering and using domain names that infringe third-party trademark rights, referring to several prior UDRP administrative proceedings naming Respondent as respondent, and ordering transfer.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its record of registration. The express courier delivery service engaged by the Center reported successful delivery of the Complaint to the physical address provided in Respondent’s registration. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided substantial evidence to establish rights in the trademarks NBA FIT and NBA, including evidence of registration of those trademarks at the USPTO and use in commerce in the United States and other countries (see Factual Background, supra). In the United States, trademark registration establishes a presumption of ownership and validity of the trademark, and Respondent has not challenged that presumption. The Panel determines that Complainant owns rights in the trademarks NBA FIT and NBA in the United States.

The disputed domain name <nbafit. com> is identical to Complainant’s NBA FIT trademark for purposes of the Policy.²

The disputed domain name adds the term “fit” to Complainant’s well-known NBA trademark. Complainant’s NBA trademark is distinctive and well-known. The term “fit” refers to a state of physical conditioning.³ Internet users would expect an adjective referring to sound physical conditioning to be associated with Complainant’s NBA trademark. By adding the term “fit” to NBA, Respondent does not avoid confusing similarity with Complainant’s NBA trademark. The Panel determines that the disputed domain name is confusingly similar to Complainant’s NBA trademark.

The Panel determines that Complainant holds rights in the trademarks NBA FIT and NBA, and that the disputed domain name is identical to Complainant’s NBA FIT trademark and confusingly similar to Complainant’s NBA trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. ” (Policy, paragraph 4(c))

Complainant has alleged that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has not authorized, licensed or consented to Respondent’s use of the disputed domain name; (2) there is no evidence that Respondent is commonly known by the disputed domain name, and Respondent does not own any trademark rights for NBA or NBA FIT, and; (3) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use, inter alia, because Respondent is using the disputed domain name to operate a link-farm parking page offering goods and services competitive with those of Complainant. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent is using the disputed domain name to direct Internet users to a link-farm parking page that includes links to a variety of third-party providers of goods and services. A substantial portion of the links direct Internet users to providers of goods and services relating to sports activities and products that are competitive with those promoted by Complainant under its NBA FIT and NBA trademarks. Respondent is using the goodwill associated with Complainant’s well-known NBA trademark to advertise and promote the commercial interests of third parties without the consent of Complainant. This does not constitute a bona fide offering of goods or services, and it does not constitute noncommercial or fair use of Complainant’s trademarks. See, e.g., Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404, and references therein. There is no evidence that Respondent has been known by the disputed domain name, or has trademark rights in it.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include that:

“(ii) [respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; or (iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s ] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”

Complainant has provided evidence in the form of prior decisions by UDRP panels establishing that Respondent has engaged in a pattern or practice of registering the trademarks of third-parties in order to prevent the owners from reflecting their trademarks in corresponding domain names. Such practice evidences bad faith.

Complainant has argued that Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business. There is, however, little or no evidence on the record of this proceeding to establish that motivation by Respondent.

Respondent has used, and is using, the disputed domain name to direct Internet users to a link-farm parking page where Internet users are directed to third-party providers of goods and services competitive with those offered and promoted by Complainant. Complainant’s NBA trademark is well-known. The Panel finds that Complainant’s NBA FIT trademark would be associated by Internet users with Complainant’s well-known goods and services. Respondent is presumably earning click through revenues from its link-farm page. Respondent is using the disputed domain name for commercial gain by creating confusion as to Complainant as the source, sponsor, affiliate, or endorser of Respondent’s link farm website. Such use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy because it has engaged in a pattern of registering the trademarks of third parties (including Complainant) in domain names, and because it has registered and is using the disputed domain name to create confusion regarding Complainant as the source, sponsor, affiliate or endorser of Respondent’s commercial website.

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, <nbafit.com> be transferred to the Complainant.

Frederick M. Abbott
Sole Panelist
Date: February 23, 2013

¹ Complainant has furnished copies of seven additional certificates of registration from the USPTO for the word service mark and trademark NBA.

² The Panel recognizes that the NBA FIT trademark is registered by Complainant for a limited class of goods, but Complainant has used the trademark more broadly in connection with fitness programs. In this regard, the potentially narrow presumption of rights conferred by registration does not necessarily limit the scope of goods and/or services as to which Complainant may be understood to enjoy unregistered trademark rights. Because Respondent does not challenge Complainant's trademark rights, or their scope, the Panel need not make any specific determination this regard.

Addition of the generic top-level domain identifier “.com” does not affect the analysis of identicalness in circumstances such as those here.

³ See Mirriam-Webster Online Dictionary at ”http://www.merriam-webster.com/dictionary/fit”, definition no. 3.