WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Connor Sport Court International, Inc. v. Bizzy Signals Entertainment / Presto Productions
Case No. D2008-1157
1. The Parties
Complainant is Connor Sport Court International, Inc. (“Complainant”) of Salt Lake City, Utah, United States of America.
Respondent is Bizzy Signals Entertainment / Presto Productions (“Respondent”) of Memphis, Tennessee, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <sportscourt.com> (the “Domain Name”). The registrar is Network Solutions, Inc. (the “Registrar”).
3. Procedural History
On July 30, 2008, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email.
On July 30, 2008 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.
On July 31, 2008, the Center received hardcopy of the Complaint. On August 2, 2008 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. Complainant paid the required fee.
The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
On August 7, 2008, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On August 28, 2008, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On September 3, 2008 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.
4. Factual Background
Complainant is in the business of manufacturing and marketing, among other things, modular athletic flooring products. As part of its efforts to market and promote its products it has used the trademark SPORT COURT extensively in the marketplace for at least the last 35 years. Complainant has invested millions of dollars in marketing and promotion of it modular flooring products. The SPORT COURT products have been a very successful product with sales growing significantly since their introduction. The sales have occurred both domestically (in the United States of America, “United States”) and internationally. As such, Complainant is the owner of rights associated with SPORT COURT throughout the United States as well as the international marketplace.
For purposes of establishing rights in SPORT COURT, Complainant cites its several United States trademark registrations. However, it is also the owner of numerous foreign trademark registrations for SPORT COURT. Complaint is the owner of United States Trademark Registration No. 1,100,976 for SPORT COURT for use in connection with recreational patio installation services and has used this mark continuously in commerce since at least as early as 1973. Complainant is also the owner of United States Trademark Registration No. 1,155,586 for SPORT COURT for use in connection with: tote bags; clothing, namely sun visors, and t-shirts; and sport equipment, namely backboards, nets, racquets, balls and ball rebounders and has used this mark continuously in commerce in connection with these goods since at least as early as 1978.
Complainant is also the owner of the United States Trademark Registration No. 1,727,818 for the use of SPORT COURT for use in connection with “recreational and athletic play surfaces and related equipment for said surface, namely nets, basketball backboards, and lighting fixture sold as a unit” and has continuously used this mark in connection with these goods since at least as early as 1975. Moreover, Complainant is the owner of United States Trademark Registration No. 2,479,328 for the use of SPORT COURT in connection with “plastic interlocking tiles” and has continuously used the mark in connection with these goods since at lease as early as 1974. Complainant has several additional United States registrations for the use of SPORT COURT.
5. Parties’ Contentions
A. Complainant’s contentions
i. Complainant contends that it has numerous registrations for the use of SPORT COURT (the “SPORT COURT Mark”, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the SPORT COURT Mark. 15 U.S.C. § 1115.
ii. Complainant argues that the Domain Name is confusingly similar to the SPORT COURT Mark, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the SPORT COURT Mark with the addition of the non-distinctive letter “s” and the required extension “.com”.
iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. Complainant alleges that the only use of the Domain Name by Respondent is to provide links to advertised goods and services of others, many of which relate to Complainant’s products and to products of Complainant’s competitors. Complainant further alleges that such links relating significantly to the trademarked goods of Complainant do not constitute a bona fide offering of goods and services.
Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the SPORT COURT Mark in a domain name or in any other manner.
Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant alleges that Respondent is seeking commercial gain from the links it has established on the website to which the Domain Name resolves.
iv Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).
Complainant alleges that the actions of Respondent satisfy the criteria of Paragraph 4(b)(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s SPORT COURT Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
B. Respondent’s contentions
Respondent has chosen not to file Response or otherwise contest the allegations of Complainant.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System S.a.S, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainant contends that it has numerous registrations of the SPORT COURT Mark, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the SPORT COURT Mark. 15 U.S.C. § 1115.
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
Respondent has not contested the assertions by Complainant that it has valid registrations of the SPORT COURT Mark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the SPORT COURT Mark.
Identity or Confusing Similarity
Complainant further contends that the Domain Name is confusingly similar to the SPORT COURT Mark pursuant to the Policy paragraph 4(a)(i), because the Domain Name wholly incorporates the SPORT COURT Mark with the addition of the non-distinctive letter “s” and the required extension “.com”.
Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the SPORT COURT Mark.
As numerous courts and prior UDRP panels have recognized, 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. See, Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to Complainant’s registered trademark.
Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).
The Panel notes that the entirety of the SPORT COURT Mark is included in the Domain Name. The Panel further finds that the addition of the letter “s” in non-distinctive.
The Panel also finds that the addition of the phrase “.com” is non-distinctive because it is a gTLD required for registration of a domain name.
Therefore, the Panel finds that the Domain Name is confusingly similar to the SPORT COURT Mark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii) and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
The Panel concludes that use of the Domain Name by Respondent providing links to advertised goods and services of others, many of which relate to Complainant’s products and to products of Complainant’s competitors does not constitute a bona fide offering of goods and services.
The Panel further finds that Respondent is not commonly known by the Domain Name and has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the SPORT COURT Mark in a domain name or in any other manner.
Finally the Panel concludes that Respondent is seeking commercial gain from use of the Domain Name.
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that for instance none of the three circumstances evidencing rights or legitimate interests apply, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
Respondent has chosen not to rebut or contest the allegations of Complainant. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
Complainant alleges that the actions of Respondent satisfy the criteria of Paragraph 4(b)(iv) in that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s SPORT COURT Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Respondent has chosen not to contest the allegations of Complainant. Therefore, the Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).
7. Decision
The Panel concludes (a) that the Domain Name <sportscourt.com> is confusingly similar to Complainant’s registered SPORT COURT Mark, (b) that Respondent has no rights or legitimate interests in the Domain Name and (c) that Respondent registered and used the Domain Name 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 <sportscourt.com> be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: September 16, 2008