Marquette Golf Club v. Al Perkins
Claim Number: FA1706001738263
Complainant is Marquette Golf Club (“Complainant”), represented by Willard L. Martin, Michigan, U.S.A. Respondent is Al Perkins (“Respondent”), New Jersey, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marquettegolfclub.com> registered with GoDaddy.com, LLC.
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 Forum electronically on June 30, 2017; the Forum received payment on June 30, 2017.
On July 03, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <marquettegolfclub.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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@marquettegolfclub.com. Also on July 6, 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 July 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant operates a golf course under the MARQUETTE GOLF CLUB name, which is a thirty-six hole golf facility that has been in existence since 1912. Complainant has established common law rights in the MARQUETTE GOLF CLUB mark, which is Complainant’s corporate name. Complainant owns common law rights through its intense efforts to advertise and promote its golf club. See Compl., at Annex 5. Respondent’s <marquettegolfclub.com> domain name is identical to Complainant’s MARQUETTE GOLF MARK.
Respondent has no rights or legitimate interests in the <marquettegolfclub.com> domain name. Respondent’s disputed domain name identifies a specific facility in Marquette, Michigan, which has no relationship to Respondent, who is located in Radisson Blu Waterfront Hotel in Jersey, St. Helier. Respondent acquired the domain name shortly after the registration was inadvertently allowed to expire, and promptly replaced all of the content with pornographic material. A representative of Complainant contacted Respondent, who then offered to sell the domain name for $7,900.00.
Respondent’s only use of the <marquettegolfclub.com> domain name to date was using it to resolve to a pornographic webpage. Other than using the domain name for a pornographic website, Respondent’s only objective was to hold the domain name for ransom and extort a large sum of money. The price demanded is far in excess of any out-of-pocket expenses related to Respondent’s acquisition of the domain name. Furthermore, Respondent has engaged in a pattern of bad faith prior to this proceeding. Therefore, the Panel should find that Respondent registered, and is using, the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant operates the Marquette Golf Club in Marquette, Michigan.
2. Respondent has sufficiently established common law rights in the MARQUETTE GOLF CLUB mark.
3. Respondent registered the disputed domain name on March 15, 2014.
4 Respondent has caused the <marquettegolfclub.com> domain name to resolve to a pornographic webpage and has held it for ransom and to extort a large sum of money from 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 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has common law rights in the MARQUETTE GOLF CLUB mark, which is its corporate name. A complainant need not hold registered trademark rights in order to satisfy Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Complainant can show that its mark has acquired a secondary meaning sufficient to establish common law rights by providing evidence of longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”). Complainant attaches photos and screenshots of promotional material for its golf club in connection with the MARQUETTE GOLF CLUB mark. See Compl., at Attached Annex 5. As the Panel finds Complainant has sufficiently supported its claim that MARQUETTE GOLF CLUB has a secondary meaning, by adducing promotional materials and its longstanding, it finds that Respondent has sufficiently established common law rights in the MARQUETTE GOLF CLUB mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MARQUETTE GOLF CLUB mark. Complainant next argues that Respondent’s <marquettegolfclub.com> domain name is identical to Complainant’s MARQUETTE GOLF CLUB mark. When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Similarly, deleting spaces in a mark does not provide any distinction as domain names cannot contain spaces. See Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”). Therefore, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s MARQUETTE GOLF CLUB mark.
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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MARQUETTE GOLF CLUB trademark and to use it in its domain name, Complainant having been the previous registered owner of the disputed domain name;
(b) Respondent registered the disputed domain name on March 15, 2014;
(c) Respondent has caused the <marquettegolfclub.com> domain name to resolve to a pornographic webpage and has held it for ransom and to extort a large sum of money from Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent has no rights and legitimate interests in the disputed domain name on the ground that Respondent is not commonly known by the domain name. When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the Panel notes that the WHOIS information concerning <marquettegolfclub.com> identifies “Al Perkins” as the registrant, which Complainant argues provides no evidence that Respondent is commonly known by the domain name. Complainant also notes that the domain name identifies a specific facility in Marquette, Michigan, which has no relationship to Respondent, who is located in Radisson Blu Waterfront Hotel in Jersey, St. Helier. It seems clear that Respondent has no connection to or association with Marquette, Michigan or any other golf club, Respondent cannot be said to be commonly known by the disputed domain name. As such, the Panel finds that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the <marquettegolfclub.com> domain name pursuant to Policy ¶ 4(c)(ii);
(f) Complainant submits that it previously held the disputed domain name and inadvertently allowed it to expire. The Panel accepts that this happened. A respondent who opportunistically registers a recent mistakenly expired domain name can be used as evidence of lacking rights and legitimate interests. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (“Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name.”). To support its submission, Complainant adduces promotional materials listing the domain name. See Compl., at Attached Annex 5. The Panel views this evidence as sufficient and accepts that Complainant previously held registration for the <marquettegolfclub.com> domain name and therefore finds that Respondent lacks rights and legitimate interests in the domain name at issue.;
(g) Complainant submits that when Respondent first registered the disputed domain name, it used the resolving webpage to display pornographic material. Using an identical or confusingly similar domain name to host a pornography website is not considered a bona fide offering of good or services or a legitimate noncommercial or fair use. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited-, FA 1603444 (Forum March 19, 2015) (holding that, generally, a disputed domain which hosts adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Complainant accepts this argument as it appears from the Wayback Machine at www.archive.org that from 2004, Complainant used the domain name to resolve to a website dealing with the attractions of the Marquette Golf Club, whereas in recent times it has been used to resolve to www.siska.tv, a Russian pornography site;
(h) Complainant submits that Respondent offered to sell the disputed domain name to Complainant for $7,900.00 and therefore that Respondent does not have rights or legitimate interests in the disputed domain name. Panel finds Respondent’s actions to preclude Respondent from claiming a bona fide offering of goods or services or a legitimate noncommercial or fair use. When a respondent attempts to sell a domain name for an amount in excess of out-of-pocket expenses, the Panel may find that the respondent is not using the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). On balance the Panel accepts that this was so in the present case.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
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 name was registered in bad faith and has 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.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent attempted to sell the domain name to Complainant well in excess of out-of-pocket costs and that this evinces bad faith. Using a domain name to extort from Complainant valuable consideration in excess of out-of-pocket expenses can indicate bad faith. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Complainant verifies that the contents of the Complaint are to the best of Complaint's knowledge complete and accurate. On that basis the Panel accepts Complainant’s submissions and that Respondent has engaged in bad faith registration and use of the domain name.
Secondly, Complainant draws attention to the fact that Respondent has engaged in a pattern of bad faith registration. When a respondent has been involved in past UDRP proceedings resulting in adverse decisions against the respondent, the Panel may infer bad faith in the current proceeding. 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 verifies that the contents of the Complaint are to the best of Complaint's knowledge complete and accurate. On that basis the Panel accepts Complainant’s submissions and that Respondent has engaged in bad faith registration and use of the domain name on the ground that Respondent has engaged in a pattern of bad faith.
Thirdly, Complainant argues that the only use which Respondent ever used the <marquettegolfclub.com> domain name was to host a pornographic website. Using a domain name in connection with adult-oriented materials generally indicates bad faith. See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). As the Panel has already noted it has verified from the Wayback Machine at www.archive.org that the domain name has resolved to a Russian pornographic website. The Panel therefore finds bad faith on the ground that Respondent used the disputed domain name in connection with pornographic material.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MARQUETTE GOLF CLUB mark and in view of the conduct that Respondent engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
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 <marquettegolfclub.com> domain name be TRANSFERRED from Respondent to Complainant..
The Honourable Neil Anthony Brown QC,
Panelist
Dated: July 27, 2017
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