Karsten Manufacturing Corporation v New Ventures Services
Claim Number: FA1705001729687
Complainant is Karsten Manufacturing Corporation (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, U.S.A. Respondent is New Ventures Services (“Respondent”), Pennsylvania, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pinggolfing.com>, registered with Register.com, Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 1, 2017; the Forum received payment on May 2, 2017.
On May 02, 2017, Register.com, Inc. confirmed by e-mail to the Forum that the <pinggolfing.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 May 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2017 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@pinggolfing.com. Also on May 3, 2017, 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 May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hun Nahm, ,Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is in the business of manufacturing and selling golf equipment and providing golf related online and digital content. Complainant has established rights in the PING mark through its registration with the United States Patent and Trademark Office (USPTO) (e.g. Reg. No. 704,552, Registered Sept. 20, 1960). Complainant argues that the <pinggolfing.com> domain name is confusingly similar to Complainant’s PING marks because the disputed domain name fully incorporates the marks and adds the generic or descriptive term “golfing” and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the <pinggolfing.com> domain name. Respondent, who the WHOIS record lists as “New Ventures Services”, is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use its PING mark. The disputed domain name resolves to a website that contains pay-per-click links leading to third party websites offering services that compete with Complainant. Such actions support a finding that Respondent has no rights or legitimate interests in the disputed domain name. The notoriety of Complainant’s marks and their strong affiliation with Complainant further supports a finding that Respondent has no rights or legitimate interests in the disputed domain name.
iii) Respondent registered and uses the <pinggolfing.com> domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the PING mark because the disputed domain name uses the mark in conjunction with “golfing”, which is the industry in which Complainant uses its famous mark. Additionally, Respondent uses the disputed domain name to attract consumers for commercial gain by creating a likelihood of confusion with Complainant’s mark. Further, Respondent has a history of this kind of behavior, with seven prior adverse UDRP rulings in the Forum. Finally, Respondent offers the disputed domain name for sale to the general public on its website located at the domain.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the <pinggolfing.com> domain name on October 26, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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."
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 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 (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.”).
i) Complainant asserts that it has established rights in the PING mark through its registration with the USPTO (e.g. Reg. No. 704,552, Registered Sept. 20, 1960). Resgistration of a mark with the USPTO sufficiently establishes rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore finds that Complainant owns established rights in the PING mark.
ii) Complainant argues that Respondent’s <pinggolfing.com> is confusingly similar to Complainant’s PING mark because it incorporates the mark in its entirety and merely adds a descriptive or generic term along with a gTLD. Adding descriptive terms to marks does not sufficiently distinguish domain names. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). Similarly, the addition of a gTLD to a mark is irrelevant for a confusingly similar analysis. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore agrees and finds that the disputed domain name does not contain changes that would sufficiently distinguish it from the PING mark.
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 (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 (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.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name and that Complainant has not authorized Respondent to use its PING mark. Where a respondent fails to submit a response, relevant information includes the WHOIS information to determine whether Respondent is commonly known by the disputed domain name. 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). The WHOIS information on record lists “New Venture Services” as the registrant for the disputed domain name. Furthermore, lack of evidence in the record showing that Complainant authorized Respondent to use the PING mark can further support a finding that Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not been commonly known by the disputed domain name.
Complainant next argues that Respondent is precluded from claiming it has rights or legitimate interests in the disputed domain name because the PING mark is famous within the golf industry and the mark is strongly affiliated with Complainant. The Panel finds that when the disputed domain name is confusingly similar to a famous mark, Respondent cannot claim rights or legitimate interests in the disputed domain name. See Nike, Inc. v. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing the complainant's distinct and famous NIKE trademark). Complainant does not provide specific evidence to support this assertion. In the absence of a Response, the Panel still agrees, however, and finds Complainant’s assertion of the PING mark’s notoriety sufficient to conclude that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant further argues that Respondent is using the disputed domain name to resolve to a website which generates revenue for Respondent in the form of pay-per-click advertisements to competitor websites. Using a disputed domain name to resolve to a website containing links to competitor websites fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) & (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving page for the disputed domain name, which shows a website containing links to websites providing services related to golfing, which directly competes with Complainant’s services. Complainant presumes that Respondent benefits commercially from the links. The Panel therefore finds that Respondent’s offering of competing links fails to amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant contends that Respondent publicly offers the disputed domain name for sale. Offering a disputed domain name for sale, especially when the value of that domain name is dependent on the fame of a complainant’s mark, can support a finding of bad faith. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). On the screenshot provided by Complainant, the resolving webpage advertises the disputed domain name for sale at the top of the screen. Therefore the Panel finds that Respondent has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant also asserts that Respondent has engaged in bad faith registration of disputed domain names in the past. A pattern of bad faith registration, or cybersquatting, may support a finding of bad faith in the current dispute. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant cites seven cases which found Respondent acted in bad faith when registering and using the domain name. The Panel agrees and finds that Respondent’s repeated bad faith registration constitutes bad faith in the instant proceedings under Policy ¶ 4(b)(ii).
Further, Complainant argues that Respondent uses the disputed domain name to attract consumers to its website containing links to competitors for commercial gain. Using a confusingly similar domain name to provide links to competitors may demonstrate bad faith. See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). As noted previously, the screenshot provided by Complainant shows that the disputed domain name resolves to a website containing links to other websites offering golfing products and services, which is the industry in which Complainant operates. As the Panel presumes that Respondent financially benefits from attracting consumers to its website through the use of the disputed domain name, it finds that Respondent registered the disputed domain name in bad faith.
Finally, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s rights in the PING mark and therefore registered the disputed domain name in bad faith. However, the Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The disputed domain name resolves to a website containing links to other websites offering golfing products and services, which is the industry in which Complainant operates. Therefore, the Panel infers and concludes that Respondent had actual knowledge of Complainant’s rights in the PING mark and registered the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pinggolfing.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 5, 2017
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