Lance Armstrong Foundation v. Media Services World Inc.
Case No. D2007-1945
1. The Parties
The Complainant is the Lance Armstrong Foundation (the “Foundation” or “LAF”), Austin, Texas, of United States of America, represented by DLA Piper US LLP, United States of America.
The Respondent is Media Services World Inc., (“Media Services” or “MSW”) Panama City, Panama.
2. The Domain Nameand Registrar
The disputed domain name <lancearmstrongfoundation.com> is registered with Claimeddomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2007. On December 31, 2007, the Center transmitted by email to Claimeddomains, LLC a request for registrar verification in connection with the domain name at issue. On January 9, 2008, Claimeddomains, LLC transmitted by email to the Center its verification response confirming that the 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”), 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, and the proceedings commenced on January 10, 2008. Thereafter, it came to the Center's attention that the email address to which the Complaint was initially notified on January 10, 2008 contained an inadvertent error. Out of an abundance of caution, the Center resent the notification of Complaint to the corrected email address and extended the response deadline another twenty days until February 24, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2008.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on March 7, 2008. 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. The Panel finds that it was properly constituted.
4. Factual Background
The Complainant, the Lance Armstrong Foundation, is a Texas non-profit corporation founded in 1997 by Lance Armstrong, a renowned cyclist and cancer survivor. The Foundation supports public health initiatives, national advocacy, research and survivorship education as well as providing resources in the field of cancer and cancer survivorship. It maintains an official website at “www.laf.org”. The Foundation registered the trademark and service mark LANCE ARMSTRONG FOUNDATION with the United States Patent and Trademark Office on October 30, 1997.
The Complainant asserts that when it learned of the fact that the contested domain name had been registered by Media Services World, Inc. it informed Media Services of its position (by letter dated October 5, 2007, sent by email and by express mail), regarding its ownership of the LANCE ARMSTRONG FOUNDATION mark, and demanded that it transfer the contested domain name and all names that used any segment of the “Lance Armstrong Foundation” name to it. It demanded further that Media Services cease and desist in using the mark or any similarly confusing marks.
According to the affidavit submitted by Complainant’s legal counsel, DLA Piper US LLP, no response to the October 5, 2007 letter was received. Counsel attested further that a second such letter was sent on October 16, 2007 and that no response to that letter was received either.
According to a further affidavit submitted by Complainant’s legal counsel, the Respondent is not in any relationship with, nor authorized by the Complainant to appropriate LAF’s trademark or to otherwise associate itself with the Foundation. Nor has the Respondent filed any applications for registration of the LANCE ARMSTRONG FOUNDATION mark in any trademark offices or jurisdictions worldwide.
5. Parties’ Contentions
A. Complainant
The Complaint is based on the Foundation’s exclusive rights to the trademark and service mark which is used in connection with a wide variety of services and products related to cancer, cancer recovery and survival. It is contended further that the Foundation’s LANCE ARMSTRONG FOUNDATION mark is arbitrary and famous in the context in which it is used and is therefore entitled to the broadest protection under the law. LAF has used the mark exclusively and continuously since 1997. It owns several US trademark registrations of the LANCE ARMSTRONG FOUNDATION mark in connection with: charitable fundraising services; development and dissemination via the internet of educational materials of others in the field of cancer, cancer recovery and survival; provision of a website via the internet featuring medical information in the nature of personal stories relating to cancer, cancer recovery and survival; lobbying services; provision of research grants; the sale of jewelry; T-shirts and hats; posters; educational books in the field of public health, cancer, cancer recovery and cancer survivorship; and educational services.
Copies of the Complainant’s registration certificates from the United States Patent and Trademark Office were attached the Complaint. Attached to the attorney’s affidavit was a list of the Foundation’s registrations of the LANCE ARMSTRONG FOUNDATION mark in other countries.
The contested domain name is virtually identical to the Foundation’s famous LANCE ARMSTRONG FOUNDATION mark. The Respondent registered and is using the domain name either or both to attract consumers to its website for the purpose of diverting Internet users by creating a likelihood of confusion with the LANCE ARMSTRONG FOUNDATION mark as to the source, sponsorship, affiliation, or endorsement of its site and/or the goods and services advertised on its site or accessible through the many links provided thereon.
It was contended further that the Respondent registered and is using the contested domain name in connection with the web site that offers links to third party websites unassociated with LAF, the legal owner of the LANCE ARMSTRONG FOUNDATION mark. The web pages accessible under Media Service’s <lancearmstrongfoundation.com>domain name include links to subjects such as “Livestrong Bracelets,” “Charm Bracelets,” “Rubber Bracelets,” “Lance Armstrong Foundation,” “Breast Cancer Ribbon,” “Wristband,” “Breast Cancer Awareness.” While a few of these links direct users to a LAF-owned site, most are to sites with no affiliation to LAF and are in direct competition with it.
Moreover, since the Respondent uses LAF’s LANCE ARMSTRONG FOUNDATION mark to attract consumers looking for the Complainant’s products and services to the Respondent’s web site, its use of this domain name is likely to lead consumer confusion as to the source, sponsorship, affiliation, or endorsement of that site and/or goods and services advertised on it or accessible through the many links provided on it.
The contested domain name was registered and used after the Complainant’s mark had become well known. MSW has no relationship with, nor authorization by, LAF to use the mark, to appropriate LAF’s domain name, or to otherwise associate itself with LAF. It is not otherwise affiliated with LAF nor its LANCE ARMSTRONG FOUNDATION mark in any manner. Nor has the Respondent filed any applications for registration of LANCE ARMSTRONG FOUNDATION mark in any trademark offices or jurisdictions worldwide. Furthermore, MSW is not making any legitimate noncommercial or fair use of the domain name, as the contested domain name is used to attract Internet users seeking LAF’s legitimate website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, in respect of each of the contested domain names, that:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
First, the Complainant claims and the Panel has verified to its satisfaction that the Complainant is the owner of the LANCE ARMSTRONG FOUNDATION mark in the United States of America and in other countries. The Panel also verified that the Complainant operates a website which incorporates the LANCE ARMSTRONG FOUNDATION mark.
The domain name in dispute <lancearmstrongfoundation.com>, is plainly confusingly similar to the Complainant’s trademark. It employs the mark, adding to it only the suffix “.com”. Given that the LANCE ARMSTRONG FOUNDATION mark is associated with the Foundation, the resulting combination makes the disputed domain name confusingly similar to the LANCE ARMSTRONG FOUNDATION mark.
The disputed domain name is thus confusingly similar, if not plainly identical, to a mark in which the Complainant has rights. The Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Second, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant has proven this beyond any doubt. There is no evidence of the Respondent’s 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.
The Respondent has no apparent connection with the Complainant, nor has it been licensed or authorized by it to use the disputed domain name. The disputed domain name is evidently not the Respondent’s name, nor is there any evidence that the Respondent is commonly known by that name. Nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.
The Panel agrees with the Complainant therefore that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Third, it must be shown that the domain name at issue has been registered and is being used in bad faith. The Respondent’s domain name serves to divert users to a website which contains sponsored links. The Respondent has misled consumers by diverting Internet traffic away from the Complainant’s website in an attempt to generate business by luring potential customers to the Respondent’s website.
In the circumstances, the Panel has no doubt in concluding that the domain name was registered and used in bad faith.
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 domain name <lancearmstrongfoundation.com> be transferred to the Complainant.
J. Christopher Thomas, Q.C. Sole Panelist
Dated: March 21, 2008
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