GolfNow, LLC v. ICS Inc
Claim Number: FA1411001589812
Complainant is GolfNow, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS Inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <olfnow.com>, registered with Pdr 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2014; the National Arbitration Forum received payment on November 13, 2014.
On November 14, 2014, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <olfnow.com> domain name is registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the name. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Pdr 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 November 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 2014 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@olfnow.com. Also on November 24, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant owns the trademark GOLFNOW.COM through registration of such mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,348,235, registered Dec. 4, 2007). Complainant uses the GOLFNOW.COM mark for online tee time reservations.
The <olfnow.com> domain name is confusingly similar to the GOLFNOW.COM mark as the domain name merely removes a single letter from the mark.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS record. In addition, Complainant has not authorized Respondent to use the GOLFNOW.COM mark in a domain name. To further demonstrate Respondent’s lack of rights, Respondent is using the disputed domain name to redirect users to a website featuring links related to and competing with Complainant’s golf tee time reservation services. Respondent presumably generates click-through revenue from the promoted links. Such use demonstrates no Policy ¶ 4(c)(i) bona fide offering, nor any Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent has engaged in bad faith registration and use. Respondent’s willingness to sell the subject domain name suggests Respondent’s bad faith. Further, Respondent has a history of bad faith as documented by prior UDRP decisions against Respondent. This checkered history informs the instant case. Respondent’s use of the disputed domain name to promote links in competition with Complainant also evinces bad faith as such links serve to disrupt Complainant’s business in violation of Policy ¶ 4(b)(iii). As Respondent presumably profits from these competing links, Respondent is profiting from Complainant’s goodwill via the confusing nature of the <olfnow.com> domain name and resolving website. Finally, Respondent’s <olfnow.com> domain name constitutes a common misspelling of the GOLFNOW.COM mark, which amounts to typosquatting, and is indicative of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GOLFNOW.COM mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its GOLFNOW.COM trademark.
Respondent uses the at-issue domain name to address a website featuring links related to and competing with Complainant’s golf tee time reservation services.
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(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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the GOLFNOW.COM trademark demonstrates Complainant’s rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction.)
In forming the at-issue domain name Respondent removes the letter “G” from Complainant’s trademark and appends the second-level domain name “.com” to the resulting string. Doing so does nothing to distinguish the resulting domain name from such mark under Policy ¶ 4(a)(i). Therefore the Panel finds that Respondent’s <olfnow.com> domain name is confusingly similar to Complainant’s GOLFNOW.COM. See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity); see also, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that top-level domains are irrelevant for purposes of the Policy)
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists ““ICS Inc” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <olfnow.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent is using the at-issue domain name to direct users to a website featuring links related to, and competing with, Complainant’s golf tee-time reservation service. Respondent apparently generates click-through revenue when a visitor clicks on one of these links. Such use of the trademark laden at-issue domain name is neither a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, the record shows the domain name for sale in the amount of $799, a price in excess of the out-of-pocket costs associated with its registration. Such offering suggests Respondent’s bad faith registration and use of the at-issue domain name pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Second, Respondent has a history of cybersquatting as documented by its suffering multiple adverse UDRP decisions. See for example ER Marks, Inc. and QVC, Inc. v. ICS Inc., FA 1428474 (Nat. Arb. Forum Mar. 20, 2012); Regions Asset Co. v. ICS Inc., FA 1436598 (Nat. Arb. Forum Apr. 26, 2012). Respondent’s history of bad faith further point to Respondent’s bad faith in the instant case pursuant to the pattern requirement of Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Third, Respondent’s use of the <olfnow.com> domain name to promote links in competition with Complainant additionally evinces Respondent’s bad faith as such links serve to disrupt Complainant’s business in violation of Policy ¶ 4(b)(iii). Notably, the landing page addressed by the at-issue domain name displays the links such as “Golf Tee Times” and “Golf Reservations.” These links compete with Complainant’s own golf reservation services. Using the domain name in this manner is likely disruptive to Complainant’s business and shows Respondent’s bad faith under Policy ¶ 4(b)(iii).
Fourth, the above mentioned competitive links are intended to generate click-through fees that benefit Respondent. Respondent enhances Internet traffic to these links by inappropriately capitalizing on Complainant’s goodwill via the confusing nature of the <olfnow.com> domain. This use of the at-issue domain name demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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).”).
Finally, Respondent’s <olfnow.com> domain name exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string when searching for products or services associated with a targeted trademark and thereby be inadvertently directed to a web presence controlled by the domain name’s registrant. Here, Respondent simply removes the letter “g” from Complainant’s trademark to form the at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <olfnow.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 5, 2015
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