WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Russell Brands LLC v. Tony Cognata

Case No. D2011-1394

1. The Parties

The Complainant is Russell Brands LLC of United States of America, represented by Cabinet Beau de Lomenie, France.

The Respondent is Tony Cognata of United States of America.

2. The Domain Name and Registrar

The disputed domain name <spalding.net> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2011. On August 17, 2011, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On August 18, 2011, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 19, 2011.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2011.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on October 6, 2011. 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.

The specific deficiency in the Complaint identified by the Center concerned the registrar with which the disputed domain name is registered. The original Complaint identified the registrar as: Namebargain.com. The amended Complaint correctly identifies the registrar as Register.com.

4. Factual Background

The Complainant owns the numerous trademarks registrations evidencing exclusive rights to the trademark SPALDING in connection with sporting and fashion goods, including United States Trademark Registration No. 1880728 for the trademark SPALDING, United States Trademark Registration No. 3280583 for the trademark S SPALDING; Canadian Trademark Registration No. TMDA2912 for the trademark SPALDING; Canadian Trademark Registration No. TMA768704 for the trademark SPALDING; and CTM Trademark Registration No. 008238032 for the trademark A.G. SPALDING BROS, 520 FIFTH AVENUE NEW YORK.

The Complainant is also the owner of the domain name <spalding.com> registered on October 31, 1994.

The disputed domain name <spalding.net> was registered on June 11, 1998 and expires on June 10, 2012.

5. Parties’ Contentions

A. Complainant

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

In 1876, the first A.G. Spalding & Brothers sporting goods store opened in Chicago, Illinois. In 1894, Spalding developed the very first basketball and in 1900, Spalding was the largest manufacturer of baseball bats in the United States of America. The above-listed trademarks have been used for many years and are still used currently in connection with sporting and fashion goods. Consequently, it is undisputed how well-known the SPALDING trademark is particularly in connection with sporting goods of all kinds.

Complainant is also the owner of two domain names, namely, <spalding.com> and <spaldingequipment.com>.

The domain name <spalding.net> reproduces the distinctive and dominant part of the Complainant’s trademark SPALDING, with the single addition of the generic top level domain (“gTLD”) “.net”.

The disputed domain name is identical or at least confusingly similar to the Complainant’s prior trademarks.

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

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant has never granted, assigned, licensed, sold or transferred any rights in its trademarks to the Respondent.

The Respondent has no links with the Complainant and has no authorization to use the name SPALDING.

The Respondent did not build his reputation with the disputed domain name and does not have any rights over a trademark, company name or business name equivalent or including SPALDING.

The Respondent does not associate the disputed domain name with a good faith offering of goods and services. The domain name <spalding.net> doesn’t direct to any website.

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

The Respondent does not associate the disputed domain name with a good faith offering of goods and services since there is no website attached to the domain name <spalding.net>.

Furthermore, the Respondent could not ignore, considering his American citizenship, the reputation of the trademark SPALDING.

Those circumstances seem to indicate that the disputed domain name was registered or acquired primarily for the purpose of disrupting the business of the Complainant and preventing the Complainant from reflecting its trademark in a corresponding domain name, which would be of interest for him.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Because of Respondent’s default, the Panel may accept as true the factual allegations in the Complaint, and may draw appropriate inferences. See, 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 and 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

Complainant must prove that: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. (Policy, paragraph 4(a).)

A. Identical or Confusingly Similar

Given Complainant’s long and extensive use of the SPALDING trademark and its ownership of numerous worldwide registrations for the SPALDING trademark, the Panel finds that Complainant has trademark rights in the SPALDING trademark. The Panel also finds that the disputed domain name is nearly identical to Complainant’s SPALDING trademark. It incorporates Complainant’s entire trademark and differs from Complainant’s registered SPALDING trademark only in that it adds the “.net” gTLD. 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”).

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.

B. Rights or Legitimate Interests

According to 4(c) of the Policy, in order for the Respondent to demonstrate rights or legitimate interests in the disputed domain name, it must show

“(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 non-commercial 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”.

With respect to 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. At the time the UDRP Complaint was filed, the disputed domain name was not associated with any website.

With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name. Further, Complainant has never licensed nor otherwise permitted the Respondent to use its SPALDING trademark or to apply for any domain name incorporating the trademark. There is no relationship between the Complainant and the Respondent.

With respect to 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate non-commercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services.

It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. See, 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 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, paragraph 2.1. The ultimate burden of proof, however, remains with the complainant. See, 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 name. Moreover, the Respondent has not rebutted such a prima facie showing.

The Panel accordingly finds for the Complainant under the second element of the Policy.

C. Registered and Used in Bad Faith

Complainant’s allegations of bad faith are not contested. It is improbable that Respondent was unaware of Complainant’s trademark rights when it registered the <spalding.net> domain name on June 11, 1998, since the SPALDING trademark has been in use for over 100 years.

Further, the evidence shows that the disputed domain name is not associated with any website. As to whether the Respondent’s passive use of the Domain Name constitutes bad faith:

“the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith “.

In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; McDonald’s Corporation v. Easy Property, WIPO Case No. D2006-1142 and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877.

Accordingly, the Panel finds that the Respondent’s holding of the disputed domain name satisfies the requirement of paragraph 4(a)(iii) that the domain name “is registered and is being used in bad faith.”

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 domain name <spalding.net> be transferred to the Complainant.

Lawrence K. Nodine
Sole Panelist
Dated: October 21, 2011