GOLFNOW, LLC v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1202001430960
Complainant is GOLFNOW, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <golfnom.com> and <gofnow.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2012; the National Arbitration Forum received payment on February 23, 2012.
On February 24, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <golfnom.com> and <gofnow.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 February 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2012 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@golfnom.com, postmaster@gofnow.com. Also on February 28, 2012, 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 March 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following submissions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant, GOLFNOW, LLC, a company incorporated in the USA, was founded in 2001 and is engaged in the business of enabling golfers to book tee times on golf courses. It has been very successful and its services are available to and are used by golfers in the USA and around the world.
2. Complainant owns trademark registrations with the USPTO") for GOLFNOW (Reg. No. 3,348,231 filed December 13, 2005; registered December 4, 2007); GOLFNOW.COM (Reg. No. 3,348,235 filed December 14, 2005; registered December 4, 2007); and GOLFNOW.COM THE POWER TO PLAY MORE and Design (Reg. No. 3,397,119 filed December 5, 2006; registered March 18, 2008).
3. Respondent registered the <golfnom.com> and <gofnow.com> domain names on July 31, 2007 and November 15, 2006, respectively. The domain names resolve to websites featuring third-party links to competing and unrelated websites.
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.
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 the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).
Complainant has presented the Panel with several trademark registrations that it purports to own and which have been registered with the USPTO: GOLFNOW (Reg. No. 3,348,231 filed December 13, 2005; registered December 4, 2007); GOLFNOW.COM (Reg. No. 3,348,235 filed December 14, 2005; registered December 4, 2007); GOLFNOW.COM THE POWER TO PLAY MORE and Design (Reg. No. 3,397,119 filed December 5, 2006; registered March 18, 2008)(collectively the “GOLF NOW marks”). The Panel finds this evidence sufficient to grant Complainant rights in its marks under Policy ¶ 4(a)(i) and the Panel also finds that the applicable start date for such rights is the filing date with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant then contends that the <golfnom.com> and <gofnow.com> domain names are confusingly similar to its GOLF NOW marks. It will be seen that both of the disputed domain names differs from GOLF NOW marks and in various respects. In comparing the domain names with the GOLFNOW.COM mark, for example, the Panel notes that the <golfnom.com> domain name replaces the letter “w” with the letter “m,” and the <gofnow.com> domain name removes the letter “l.” The Panel finds that neither change makes the domain names distinct from Complainant’s marks under Policy ¶ 4(a)(i) and that each of the domain names is confusingly similar to the marks as, even when the changes are taken into account, the resulting domain names are patently typosquatting versions of all of the GOLF NOW marks. That is so because, in each of the marks, the words GOLF NOW dominate the entire trademark and constitute the major element presented to the viewer. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”).
Accordingly, the disputed domain names are confusingly similar to the GOLF NOW marks and the Panel makes a finding to that effect.
Complainant has thus made out the first of the three elements that it must establish.
It is now well-established that 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Applying that principle, the Panel finds that Complainant has made out such a prima facie case. The prima facie case is based on the following considerations:
(a) Respondent has chosen for its domain names Complainant’s GOLF NOW marks and has embodied the substance of the mark in the domain names, making only slight spelling changes in each case, but leaving the substance of the trademarks as part of the domain names and then only adding the generic Top Level Domain “.com”;
(b) Respondent has then linked the domain name to pay-per-click websites featuring third-party links to competing and unrelated companies, thus giving the false impression to internet users that the disputed domain names are official domain names of Complainant and that they have led to websites that offer the same goods and services as Complainant and those endorsed by Complainant.
(c) the use of Complainant’s GOLF NOW marks in the manner just described has clearly been undertaken without the knowledge or approval of Complainant.
(d) Complainant also claims that Respondent is not commonly known by the <golfnom.com> and <gofnow.com> domain names pursuant to Policy ¶ 4(c) (ii). In that regard Complainant argues that Respondent has not been commonly known by the disputed domain name and is not sponsored by or affiliated with Complainant in any way. The Panel notes that the disputed domain names are registered to “Private Registrations Aktien Gesellschaft / Domain Admin,” per the WHOIS information on record. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
(e) Complainant further argues that Respondent’s use of the disputed domain names does not confer rights in them. Complainant contends, and submits screen shot evidence in support, that Respondent’s domain names resolve to pay-per-click websites featuring third-party links to competing and unrelated companies. The Panel finds that Respondent’s use of the domain names is not 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
All of those matters go to make up the prima facie case. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against him, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and that they have also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is a serial cybersquatter that has been involved in numerous UDRP decisions in which it was ordered to transfer domain names to the respective complainants. See Ashley Furniture Indus., Inc. v. Private Registrations Aktien Gesellschaft c/o Domain Admin, FA 1338925 (Nat. Arb. Forum Sept. 13, 2010); see also State Farm Mutual Auto. Ins. Co. v. Private Registrations Aktien Gesellschaft Domain Admin, FA 1308139 (Nat. Arb. Forum Apr. 12, 2010); see also UnitedHealth Group Inc. v. Private Registrations Aktien Gesellschaft c/o Domain Admin, FA 1277666 Nat. Arb. Forum Sept. 24, 2009). The Panel finds that such prior adverse UDRP proceedings against Respondent are evidence of bad faith under Policy ¶ 4(b)(ii) in the instant proceedings as they show a proclivity to misappropriate the trademarks of other parties and use them to register and use domain names in bad faith. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Further, Complainant relies on Policy ¶ 4(b)(iv) and argues that Respondent is attempting to take advantage of the GOLFNOW and GOLFNOW.COM marks by providing Internet users with a links directory to competing and unrelated companies. Complainant asserts that misspelling Complainant’s marks in the domain names only adds to the confusion of Internet consumers that land on Respondent’s resolving websites and that Respondent is paid for each errant click of the mouse once users are at the websites. The Panel agrees with this submission and finds that Respondent’s use of the disputed domain names is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); 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).”).
Lastly, Complainant argues with respect to Policy ¶ 4(a)(iii) that Respondent’s use of typosquatting when registering the domain names is evidence of bad faith. Complainant contends that misspelling its marks by removing a letter or replacing a letter is evidence of typosquatting. The Panel agrees with this submission and find Respondent’s typosquatting behavior as evidence of bad faith under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, having regard to the whole of the evidence, the Panel concludes that Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression. That is so because the GOLF NOW trademarks are well-known, Respondent has used them without any authority in a clear breach of Complainant’s trademark rights, there has been a clear attempt to mislead internet users to the advantage of Respondent and as there can be no legitimate reason why Respondent would have registered the disputed domain names and used them in the manner it has.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <golfnom.com>, <gofnow.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 30, 2012
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