Acushnet Company v. Client Care / Web Commerce Communications Limited
Claim Number: FA2112001977397
Complainant is Acushnet Company (“Complainant”), represented by Jonathan M. Gelchinsky of Pierce Atwood LLP, Maine, USA. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <footjoygolfusa.com>, <footjoycanada.com>, <footjoymexico.com>, <footjoy-mexico.com>, <footjoyargentina.com>, <footjoyespana.com>, <footjoygolfshoesireland.com>, <footjoyjapan.com>, <footjoyaustralia.com>, and <footjoysingapore.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
Complainant submitted a Complaint to the Forum electronically on December 16, 2021; the Forum received payment on December 16, 2021.
On December 17, 2021, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <footjoygolfusa.com>, <footjoycanada.com>, <footjoymexico.com>, <footjoy-mexico.com>, <footjoyargentina.com>, <footjoyespana.com>, <footjoygolfshoesireland.com>, <footjoyjapan.com>, <footjoyaustralia.com> and <footjoysingapore.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 December 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 12, 2022 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@footjoygolfusa.com, postmaster@footjoycanada.com, postmaster@footjoymexico.com, postmaster@footjoy-mexico.com, postmaster@footjoyargentina.com, postmaster@footjoyespana.com, postmaster@footjoygolfshoesireland.com, postmaster@footjoyjapan.com, postmaster@footjoyaustralia.com, postmaster@footjoysingapore.com. Also on December 23, 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 January 19, 2022, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <footjoygolfusa.com>, <footjoycanada.com>, <footjoymexico.com>, <footjoy-mexico.com>, <footjoyargentina.com>, <footjoyespana.com>, <footjoygolfshoesireland.com>, <footjoyjapan.com>, <footjoyaustralia.com> and <footjoysingapore.com> domain names (the “disputed domain names”) are confusingly similar to Complainant’s FOOTJOY mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and uses the disputed domain names in bad faith.
B. Respondent did not file a Response.
Complainant conducts business the golf industry and holds a registration for the FOOTJOY mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 271,260, registered on May 27, 1930).
Respondent registered the <footjoygolfusa.com> domain name on October 22, 2021; the <footjoycanada.com> domain name on October 22, 2021; the <footjoymexico.com> domain name on October 18, 2021; the <footjoy-mexico.com> domain name on October 26, 2021; the <footjoyargentina.com> domain name on October 26, 2021; the <footjoyespana.com> domain name on October 26, 2021; the <footjoygolfshooesireland.com> domain name on October 22, 2021; the <footjoyjapan.com> domain name on October 27, 2021; the <footjoyaustralia.com> domain name on September 29, 2021; and the <footjoysingapore.com> domain name on October 23, 2021. Respondent uses the disputed domain names to compete with Complainant.
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”).
The Panel finds that Complainant has rights in the FOOTJOY mark through its registration of the mark with multiple trademark agencies around the world, including the USPTO. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s disputed domain names all use Complainant’s FOOTJOY mark and simply add descriptive terms, such as “mexico” or “golf,” and the “.com” gTLD. The addition of descriptive terms and a gTLD is not sufficient to differentiate a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding the addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).) The Panel therefore finds that Respondent’s disputed domain names are confusingly similar to Complainant’s FOOTJOY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
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 contends that Respondent lacks rights and legitimate interests in the disputed domain names because Respondent is not commonly known by the domain names and is not authorized to use the FOOTJOY mark. The WHOIS information for each disputed domain name shows that Respondent is known as “Web Commerce Communications Limited” and/or “Client Care,” bearing no resemblance to the FOOTJOY mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).
Complainant also argues that Respondent does not use the disputed domain names for a bona fide offering of goods and services or a legitimate noncommercial or fair use because the resolving websites offer competing counterfeit goods. Using a disputed domain name to offer a complainant’s goods without authorization is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use); see also 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 websites at the disputed domain names, showing that Respondent offers counterfeit versions of Complainant’s products. The Panel finds that this is not a bona fide offering of goods and services or a legitimate noncommercial or fair use, and thus Respondent has no rights Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent disrupts Complainant’s business by redirecting users to counterfeit goods. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”).
Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the FOOTJOY mark when it registered the disputed domain names, evinced by Respondent’s use of Complainant’s mark and logo to sell counterfeit goods. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <footjoygolfusa.com>, <footjoycanada.com>, <footjoymexico.com>, <footjoy-mexico.com>, <footjoyargentina.com>, <footjoyespana.com>, <footjoygolfshoesireland.com>, <footjoyjapan.com>, <footjoyaustralia.com>, and <footjoysingapore.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 20, 2022
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