WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Miami Heat Limited Partnership v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services

Case No. D2015-1479

1. The Parties

The Complainant is Miami Heat Limited Partnership of Miami, Florida, United States of America ("United States"), represented by Greenberg Traurig, LLP, United States.

The Respondent is Whois Privacy Corp. of Nassau, The Bahamas / Ryan G Foo, PPA Media Services, Ryan G Foo of Santiago.

2. The Domain Name and Registrar

The disputed domain name <miamiheatstore.com> is registered with Internet.bs Corp. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 20, 2015. On August 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2015, 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 Complainant on August 24, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 28, 2015.

The Center verified that the Complaint together with the amended 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 September 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 24, 2015.

The Center appointed Pierre Olivier Kobel as the sole panelist in this matter on October 26, 2015. 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 Complainant is a famous professional basketball team, member of the National Basketball Association. Its games are widely broadcasted in the United States and in over 200 countries around the world. It also operates its own web site "www.miamiheat.com" and a store under the URL "www.themiamiheatstore.com" where it sells products featuring its MIAMI HEAT trademark. It is also affiliated to a web site of the NBA, "www.nba.com/heat".

The Complainant owns a very large number of semi-figurative and word trademarks registered in the United States and worldwide in various classes of goods and services. The main component of all these trademarks is MIAMI HEAT. These registrations date back to 1998.

The disputed domain name was registered on November 12, 2009.

The disputed domain name is directing to a web page which contains links to further web sites or pages. Most of these links also include the terms MIAMI HEAT or Miami. These third web pages are offering goods such as t-shirts, caps and other cotton apparel, some bearing the trademark of the Complainant, and services such as hotel reservation services. The Panel notices that the layout, the number of links and the links themselves appear to be varying depending on the time and type of access to the web site of the Respondent. Overall, the contents of the Respondent's web page and referred web sites nevertheless remain the same, i.e., offer the same type of goods or services.

5. Parties' Contentions

A. Complainant

The Complainant alleges that the disputed domain name which fully incorporates its trademark MIAMI HEAT is confusingly similar to its world-famous trademark.

The Complainant alleges that the Respondent is using its trademark to divert Internet traffic to various web site offering goods and services in competition with those of the Complainant. This demonstrates the absence of bona fide offerings of goods and services or legitimate noncommercial or fair rights or interests in the disputed domain name.

The Complainant alleges that the Respondent garners fees when visitors on its web site are clicking the advertising links directing them to other web sites offering goods and services in direct competition with the Complainant's.

The Complainant confirms that it has never given any license or other authorization to the Respondent, allowing the Respondent's registration and use of a domain name incorporating its trademark. It has not identified either any application or registration in the name of the Respondent for any mark incorporating the trademark MIAMI HEAT anywhere in the world. According to the Complainant, there are no other circumstances to believe that the Respondent is commonly known by the designation MIAMI HEAT.

The Complainant therefore concludes that the Respondent cannot avail itself of any right or legitimate interest in the disputed domain name.

The Complainant's first contention is that the Respondent registered and used the disputed domain name in bad faith according to paragraph 4(b)(iv) of the Policy because it is intentionally attempting to attract Internet users to its web sites for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site.

Second, the registration and use of the disputed domain name to divert Internet traffic to competitors of the Complainant for the purpose of disrupting the Complainant's business and therefore constitutes bad faith under paragraph 4(b)(iii) of the Policy.

Third, the use of the disputed domain name appears to be part of a pattern of behavior under which the Respondent is using well-known trademarks such as BMW, Black & Decker, The Royal Bank of Scotland, Wal-Mart, Capital One, Arrowhead, etc. in which it had no rights or legitimate interests, as confirmed by the large number of quoted decisions. The complaint points out to 33 such domain name procedures against WhoIs Privacy Corp. out of which 24 took place in 2015 and 145 such domain name proceedings against "Mr. Ryan G. Foo".

The Complainant also argues that the list in paragraph 4(b) of the Policy is illustrative and not exhaustive. Circumstances such as the use of proxy servers or prior knowledge of complainant's rights are factors that can be used in support of a finding of bad faith.

The Complainant further alleges that the Respondent must have had knowledge of the Complainant's famous trademark and therefore registered and used the disputed domain name in bad faith. The use of the disputed domain name is so obviously connected with the Complainant that its very use can only suggest opportunistic and therefore bad faith registration and use. The fact that the Respondent never replied or acknowledged receipt from the Complainant's cease and desist letter suggests bad faith behavior. Last but not least, the Respondent's use of a privacy service to hide its real identity and to elude enforcement attempts by the Complainant is a final demonstration of its bad faith registration and use of the disputed domain name.

The Complainant is seeking the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, where the Complainant provides evidence that:

a. the disputed domain name is identical or confusingly similar to its trademark or service mark; and

b. the Respondent has no right or legitimate interest in respect of the disputed domain name; and

c. the disputed domain name has been registered and is being used in bad faith.

The Complainant may obtain the cancellation or the transfer of the disputed domain name under paragraph 4(i) of the Policy.

Where the Respondent does not submit a response, and unless exceptional circumstances explain or justify such failure to respond, the Panel shall decide the dispute based upon the complaint (paragraph 5(e) of the Rules).

This is confirmed by paragraph 14(a) of the Rules which stipulates that the Panel shall proceed to a decision on the complaint in the event that a Party does not comply with any of the time periods established by these Rules or the Panel. In addition, the Panel is entitled to draw such inferences it deems appropriate from any failure by a Party to comply with any provision or requirement under these Rules (paragraph 14(b) of the Rules).

A. Identical or Confusingly Similar

The Complainant has provided ample evidence of the numerous trademarks it registered in the United States and elsewhere in the world, made of the words MIAMI HEAT with graphic elements. That trademark is even well-known to the Panel.

The disputed domain name at stake here is only different from the word components of the Complainant's trademark as it includes a descriptive addition "store". If, as a result, the disputed domain name is not fully identical to the trademark, such kind of descriptive addition does not sufficiently alter the significant component of the disputed domain name to prevent or undermine any finding of confusing similarity. To the contrary, the use of a descriptive term that precisely matches one not insignificant activity of the Complainant's consisting in selling souvenir- and fan-goods bearing the Miami Heat trademark, actually creates direct confusion with the said activity and thereby materializes the possible confusion with the Complainant's trademark.

This Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The consensus view expressed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1, is that the complainant has to make a prima facie case that the respondent lacks legitimate rights or interests. Once the complainant has made such a prima facie evidence, the burden of proof shifts to the respondent to demonstrate that it has rights or legitimate interests in the domain name.

First, the Panel has no reason to doubt the allegation of the Complainant that no license or other right to use the trademark MIAMI HEAT was ever provided to the Respondent. The Respondent has made no attempt indeed to show why it had picked up a domain name so similar to the trademark of the Complainant or to show any rights or legitimate interests in the disputed domain name per paragraph 4(c)(i-iii) of the Policy. This means that prima facie the Respondent had no right or legitimate interest in the domain name generally.

One of the main contentions of the Complainant is that the Respondent is using the disputed domain name to sell competing goods. Actually, the Complainant does not allege that the Respondent is selling counterfeit goods or that the third web site is a fake. In other words, part of the issues raised by the Complainant actually pertain to intra-brand competition. In principle such kind of intra-brand competition may constitute legitimate interests in using the domain name.

Presently however, it appears that only part of the goods offered for sale by the Respondent, and in particular those offered under the first suggested link on the Respondent's webpage, such as t-shirts, jerseys, caps etc. are bearing the MIAMI HEAT trademark or an imitation of the Miami Heat trademark. Most of the other links are referring to web sites offering t-shirts and cotton apparel of any sorts, custom decorated t-shirts, and, competing goods of other brands, i.e., without relationship whatsoever with the Complainant. Although the links and other web sites referred to in the Respondent's web site appear to be changing and varying over time, it appears that the vast majority of the goods offered through the links indicated in the Respondent's web site have no connection or relationship with the merchandise offered by the Complainant. All this does not match the requirements for what could be considered as a legitimate interest.

In addition, the Respondent does not disclose its relationship with the Complainant, one requirement identified under Oki Data to show good faith Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, using the domain name to attract, for commercial gain, Internet users to the web site of the respondent or other on-line locations, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's web site or location, or of a product or service on such web site or location, may be held as evidence of bad faith registration and use of the domain name.

The evidence examined above allows the inference that the Respondent registered and used the disputed domain name to take advantage of the reputation and goodwill of the Complainant's trademark Miami Heat. There is no doubt indeed that the Respondent is using the famous MIAMI HEAT trademark as the main element of its domain name, to direct traffic to other web sites offering goods and items without relationship whatsoever with the Complainant. The web site of the Respondent is mainly constituted of links directing to third parties' commercial web sites. Respondent is obviously deriving income from such links on a pay-per-click basis, which constitutes both bad faith registration and use. ACCOR v. Steve Terry / North West Enterprise, Inc., WIPO Case No. D2006-0649; Six Continents Hotels, Inc. v. NA InterMos, WIPO Case No. D2006-1313.

Moreover, the Panel finds the evidence provided by the Complainant as to the pattern of behavior of the Respondent quite convincing and illustrative of the Respondent's necessary bad faith in registering and using a domain name essentially composed of the Complainant's trademark. Such kind of pattern of activity is usually falling under paragraph 4(b)(ii) of the Policy. See e.g., Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798.

If one may have doubts as to whether such conduct was intended to "disrupt" the business of the Complainant, there is no doubt that such repetitive conduct consisting in systematically using well-known trademarks for commercial purposes, that is to offer goods or services unrelated to the Complainant or to derive income on a pay-per-click basis, cannot be in good faith. Other panels in the past have found that the examples in paragraph 4(b) were not limitative and that a panel could rely on additional grounds for a finding of bad faith, National Association of Realtors v. John Fothergill, WIPO Case No. D2010-1284. This is to a large extent confirmed by the language at the beginning of paragraph 4(b), which stipulates that the following circumstances in subparagraphs (i) to (iv), "in particular but without limitation", shall be evidence of the registration and use of the domain name in bad faith. Paragraph 15(a) of the Rules, also confirms that a panel is to decide on the basis of the Policy, the Rules and "any rule or principle of law that it deems applicable". Panels are thus not limited by the examples set forth in paragraph 4(b) of the Policy.

As a result, the Panel finds that the disputed domain name was registered and used in bad faith according to paragraph 4(a)(iii) of the Policy.

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

Pierre Olivier Kobel
Sole Panelist
Date: November 10, 2015