Thefinishlineshop.com

The timeline behind thefinishlineshop.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Spike's Holding, LLC v. Blue Face Claim Number: FA2106001950203 PARTIES Complainant is Spike's Holding, LLC (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Blue Face (“Respondent”), California, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <thefinishlineshop.com>, registered with 1API GmbH. PANEL The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Sandra J. Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the Forum electronically on June 8, 2021; the Forum received payment on June 8, 2021. On June 9, 2021, 1API GmbH confirmed by e-mail to the Forum that the <thefinishlineshop.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On June 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thefinishlineshop.com. Also on June 10, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. On July 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant 1. Respondent’s <thefinishlineshop.com> domain name is confusingly similar to Complainant’s THE FINISH LINE mark. 2. Respondent does not have any rights or legitimate interests in the <thefinishlineshop.com> domain name. 3. Respondent registered and uses the <thefinishlineshop.com> domain name in bad faith. B. Respondent did not file a Response. FINDINGS Complainant, Spike’s Holding, LLC, operates an athletic footwear and clothing company, using its THE FINISH LINE mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. 1,872,538, registered Jan. 10, 1995). Respondent registered the <thefinishlineshop.com> domain name on May 8, 2021, and uses it to pass off as Complainant and purport to sell Complainant’s goods. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "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." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”). Identical and/or Confusingly Similar The Panel finds that Complainant has rights in the THE FINISH LINE mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Respondent’s <thefinishlineshop.com> domain name uses Complainant’s THE FINISH LINE mark, and simply adds the generic term “shop” and the “.com” gTLD. The addition of a generic term and a gTLD does not sufficiently distinguish a domain from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Thus, the Panel finds that Respondent’s <thefinishlineshop.com> domain name is confusingly similar to Complainant’s THE FINISH LINE mark. The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). Complainant argues that Respondent lacks rights and legitimate interests in the <thefinishlineshop.com> domain name, as it is not commonly known by the domain name and is not an authorized user or licensee of Complainant’s THE FINISH LINE mark. The WHOIS information of record identifies “Blue Face.” The Panel therefore finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Complainant further argues that Respondent does not use the <thefinishlineshop.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, but instead attempts to pass off as Complainant and purports to sell Complainant’s goods. Passing off and allegedly selling Complainant’s goods, real or counterfeit, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant provides screenshots of the resolving website for the disputed domain name and its own website demonstrating Respondent’s attempts to pass off and offer Complainant’s goods for sale. The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain name, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant argues that Respondent registered and uses the <thefinishlineshop.com> domain name in bad faith because Respondent attempts to pass off as Complainant and purports to sell Complainant’s goods. Passing off as a trademark holder and offering its goods for sale displays bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Fossil Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods). Accordingly, the Panel finds bad faith under Policy ¶ 4(b)(iv). Complainant also argues that Respondent registered the <thefinishlineshop.com> domain name with actual knowledge of Complainant’s rights in the THE FINISH LINE mark. Under Policy ¶ 4(a)(iii), actual knowledge of another’s trademark rights is sufficient to establish bad faith, and can be demonstrated by the notoriety of a mark and the use Respondent makes of the disputed domain. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Since Respondent uses the disputed domain name to pass off as Complainant and offer its goods for sale, the Panel finds that Respondent had actual knowledge when registering the disputed domain, in find bad faith under Policy ¶ 4(a)(iii). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <thefinishlineshop.com> domain name be TRANSFERRED from Respondent to Complainant. Sandra J. Franklin, Panelist Dated: July 5, 2021 Click Here to return to the main Domain Decisions Page. 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Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.