Golf Galaxy, Inc. v. Chor Thao
Claim Number: FA1109001407303
Complainant is Golf Galaxy, Inc. (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Chor Thao (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <golfgalaxycoupons.net>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 13, 2011; the National Arbitration Forum received payment on September 14, 2011.
On September 14, 2011, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <golfgalaxycoupons.net> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 September 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 2011 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@golfgalaxycoupons.net. Also on September 16, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is the owner of the GOLF GALAXY mark, used in connection with the operation of a multi-channel marketing golf specialty retailer.
Complainant has registrations on file with the United States Patent and Trademark Office (“USPTO”) for the GOLF GALAXY service mark (including Reg. No. 2,232,924, registered March 16, 1999).
Respondent registered the disputed <golfgalaxycoupons.net> domain name on August 30, 2011.
The disputed domain name resolves to a website displaying pay-per-click advertisements for golfing goods and services similar to those provided by Complainant.
Respondent’s <golfgalaxycoupons.net> domain name is confusingly similar to Complainant’s GOLF GALAXY mark.
Respondent has no trademark or other intellectual property rights in the disputed domain name.
Respondent’s use of the GOLF GALAXY service mark is unauthorized.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <golfgalaxycoupons.net>.
Respondent registered and uses the <golfgalaxycoupons.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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:
i. the domain name registered by Respondent 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.
Complainant has rights in the GOLF GALAXY service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a complainant’s USPTO trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the marks pursuant to Policy ¶ 4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The contested <golfgalaxycoupons.net> domain name is confusingly similar to Complainant‘s GOLF GALAXY service mark. Respondent’s addition of the generic term “coupons” to the mark in forming the disputed domain name does not avoid a finding of confusing similarity as between the domain and the mark under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to a complainant’s HARRY POTTER mark failed to distinguish the resulting domain name from the mark); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating a complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the mark).
In creating the disputed domain name, Respondent has also removed the space between the terms of the mark and added the generic top-level domain (“gTLD”) “.net.” These additions likewise fail to distinguish the domain name from the mark under the standards of the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), and U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), each of which holds that the elimination of spaces in a mark and the addition of a gTLD fail to distinguish a disputed domain name from the mark from which it derives.
Therefore, the Panel finds that Respondent’s <golfgalaxycoupons.net> domain name is confusingly similar to Complainant’s GOLF GALAXY service mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the contested domain name. Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing in support of this allegation, whereupon the burden shifts to Respondent to demonstrate that it has such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii), after which the burden shifts to that respondent to show that it does have rights or legitimate interests in that domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007):
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant has successfully made out a prima facie showing in support of its contentions under this head of the Policy. Therefore, and because Respondent has failed to submit a response to the Complaint, we may presume that Respondent has no rights or legitimate interests in the domain. See, for example, Amer. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), and Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004).
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent has no trademark or other intellectual property rights in the disputed domain name, that Respondent’s use of the GOLF GALAXY service mark is unauthorized, and that Respondent is not commonly known by the disputed domain name. Moreover, the WHOIS record for the contested domain name lists the registrant only as “Chor Thao,” which does not resemble the domain name. On this record we conclude that Respondent is not commonly known by the <golfgalaxycoupons.net> domain name so as to have demonstrated that it has rights to or legitimate interests in that domain as provided in Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by a disputed domain names, and so had no rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii), where the pertinent WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We also observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, in that the <golfgalaxycoupons.net> domain name is used to display links to websites which offer products and services similar to those which Complainant offers under its GOLF GALAXY mark. We conclude therefore that Respondent’s use of the disputed domain name as alleged in the Complaint is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights to and legitimate interests in the <bravoclub.com> domain name because that respondent was using the domain name to operate a website containing links to commercial websites competing with the business of a complainant, which the panel found not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
It is evident from the record that Respondent registered and is using the <golfgalaxycoupons.net> domain name, which is confusingly similar to Complainant’s GOLF GALAXY service mark, to disrupt Complainant’s business. This is evidence that Respondent has registered and uses the domain name in bad faith as contemplated in Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), both finding that the registration and use of a domain name to display links to websites which compete with the goods and services a complainant provides demonstrates bad faith under Policy ¶ 4(b)(iii).
Respondent’s registration and use of a domain name which is confusingly similar to Complainant’s GOLF GALAXY service mark as alleged in the Complaint creates the likelihood that Internet users will be confused as to the possibility of Complainant’s affiliation with the resolving website. This, taken together with Respondent’s presumed intent to profit from such behavior, also demonstrates bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See, for example, Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to third-party websites that featured services similar to those offered by that complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <golfgalaxycoupons.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 21, 2011
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