Complainant is Sporting Soles, Inc. of Salt Lake City, Utah, United States of America, represented by TechLaw Ventures, PLLC, United States of America.
Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Quantec, LLC / Novo Point, LLC of Dallas, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2015. On February 13, 2015, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On February 16, 2015, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on February 16, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to amend the Complaint. The Center received an e-mail in reply to the newly disclosed registrant information from Damon Nelson on February 16, 2015 indicating that his position as court appointed manager of the Domain Name under receivership was vacated by the court on February 28, 2014.
Complainant filed an amended Complaint on February 20, 2015.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on February 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2015. Respondent did not submit any response.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 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.
On April 3, 2015, eight days after the Panel was appointed and notification of this appointment was made to the parties, Respondent requested an opportunity to respond to the Complaint. The Panel issued Procedural Order No. 1 on April 8, 2015, in which Respondent was given until April 13, 2015 to explain why its request for the opportunity to submit a Response out of time should be granted. Respondent never submitted anything in response to Procedural Order No. 1. 4. Factual Background
Complainant holds several trademarks registered with the United States Patent and Trademark Office, including the following: SALT LAKE RUNNING (registered December 3, 2013; first use in commerce February 2006) in connection with, inter alia, retail sporting goods stores, online retail sporting goods stores, retail stores featuring running shoes, sports shoes, sports clothing, apparel, footwear, and accessories, etc.; and SALT LAKE RUNNING COMPANY (registered December 3, 2013; first use in commerce July 1999) in connection with, inter alia, retail sporting goods stores, online retail sporting goods stores, retail stores featuring running shoes, sports shoes, sports clothing, apparel, footwear, and accessories, etc.
Complainant also has operated a website at the domain name since July 2001 in connection with its retail sales.
The Domain Name was originally registered on March 1, 2005. It is not known from the record how long Respondent has been the registrant of the Domain Name. In any event, the Domain Name has been directed to a website at which running shoes and running apparel are offered for sale, and where information regarding running events is provided. According to Complainant, visitors to Respondent’s website are invited to purchase wares of Complainant’s competitors. 5. Parties’ Contentions A. Complainant
The salient factual allegations by Complainant are set for above. Complainant seeks a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is undisputed that Complainant holds a registered trademark for SALT LAKE RUNNING. The Domain Name is identical to this mark.
Accordingly, the Panel concludes that Policy paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Complainant has never authorized Respondent to use the Domain Name or any of Complainant’s marks for any purpose. Respondent has not responded to the Complaint in this proceeding and therefore has not attempted to explain itself or establish its bona fides vis-à-vis the Domain Name. Respondent asked for extra time in which to file a Response. The Panel allowed Respondent to justify this request. Respondent did not do so. Accordingly, any consideration of Respondent’s potential rights or legitimate interests is made here without the benefit of any input from Respondent.
In the Panel’s view, and on this record, Respondent’s use of the Domain Name, which is identical to one of Complainant’s trademarks and confusingly similar to at least one of Complainant’s other trademarks, to sell products in the same class as Complainant sells cannot constitute a bona fide offering of goods and services within the meaning of Policy paragraph 4(b)(i).
Accordingly, the Panel concludes that Policy paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes, based on the undisputed allegations and evidence presented in the Complaint, that Respondent is in bad faith under Policy paragraph 4(b)(iv). It is undisputed that the website to which the Domain Name resolves offers running shoes and apparel, in direct competition with Complainant’s own goods. The Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion between Complainant’s marks and the Domain Name.
Accordingly, the Panel concludes that Policy paragraph 4(a)(iii) has been satisfied. 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 be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: April 20, 2015
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