Acushnet Company v. Luce Khen
Claim Number: FA1809001806580
Complainant is Acushnet Company (“Complainant”), represented by Jonathan M. Gelchinsky of Pierce Atwood LLP, Maine, USA. Respondent is Luce Khen (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <titleistcncpt.com>, registered with TurnCommerce, Inc. DBA NameBright.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2018; the Forum received payment on September 18, 2018.
On September 18, 2018, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <titleistcncpt.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.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 September 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2018 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@titleistcncpt.com. Also on September 19, 2018, 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 October 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is a global leader in the design, development, manufacture, and distribution of exceedingly high quality, performance-driven golf products. Complainant has rights in the TITLEIST mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 316,118, registered Aug. 14, 1934). Complainant also has rights in the TITLEIST CNCPT mark based on its filing of a trademark application with the Canadian Intellectual Property Office (“CIPO”) (App. No. 1,884,647, filed Feb. 23, 2018).
2. Respondent’s <titleistcncpt.com>[i] domain name is identical or confusingly similar to Complainant’s TITLEIST CNCPT mark as it merely omits the space between the terms of the mark and adds the “.com” generic top-level domain (“gTLD”). Respondent’s domain name is identical or confusingly similar to Complainant’s TITLEIST mark as it adds the term “cncpt” (pronounced “concept”) and the “.com” gTLD.
3. Respondent has no rights or legitimate interests in the <titleistcncpt.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use Complainant’s marks.
4. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make any use of the resolving webpage associated with the domain name.
5. Respondent registered and uses the <titleistcncpt.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith trademark-related conduct and has been found to have registered domain names in bad faith in prior UDRP proceedings. Additionally, Respondent registered the domain name to take advantage of and capitalize on the goodwill associated with the Complainant’s marks, which in turn disrupts Complainant’s business. Further, Respondent fails to make any use of the resolving webpage linked to the domain name.
6. Moreover, Respondent’s registration of the domain name shortly after Complainant applied to register the CNCPT and TITLEIST CNCPT marks clearly shows opportunistic bad faith.
7. Finally, Respondent had actual knowledge of Complainant’s marks as the marks are famous worldwide, Complainant has registered the marks in many countries, and Complainant uses the virtually identical domain name (<titleist.com>).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TITLEIST mark. Respondent’s domain name is confusingly similar to Complainant’s TITLEIST mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <titleistcncpt.com> domain name and that Respondent registered and uses the 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.”).
Complainant has rights in the TITLEIST mark through its registration of the mark with the USPTO (e.g. Reg. No. 316,118, registered Aug. 14, 1934). Registration of a mark with the USPTO sufficiently confers a complainant’s 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). Accordingly, the Panel holds that Complainant has established rights in the TITLEIST mark for the purposes of Policy ¶ 4(a)(i).
Complainant also asserts rights in the TITLEIST CNCPT mark based on its filing of a trademark application with the CIPO (App. No. 1,884,647, filed Feb. 23, 2018). However, filing of a mark with a trademark authority generally is not sufficient to confer rights in a mark for the purposes of Policy ¶ 4(a)(i). See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). Accordingly, for the purposes of this Decision, the Panel’s ruling will be limited to evaluating Complainant’s TITLEIST mark.
Complainant argues that Respondent’s <titleistcncpt.com> domain name is identical or confusingly similar to Complainant’s TITLEIST mark as it adds the term “cncpt” (pronounced “concept”) and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also 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 finds that the <titleistcncpt.com> domain name is confusingly similar to the TITLEIST mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <titleistcncpt.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <titleistcncpt.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Luce Khen” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the TITLEIST mark. Panels may use these assertions, when uncontradicted in the record, as evidence that the respondent lacks rights or legitimate interests in the 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). Complainant further alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the marks in any manner. All of these allegations are uncontradicted. Accordingly, the Panel holds that Respondent is not commonly known by the <titleistcncpt.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant has shown that the <titleistcncpt.com> domain name resolves to a website that lacks any content. Failure to make active use of a domain name that is identical or confusingly similar to the mark of another shows a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage, which displays the message “titleistcncpt.com is coming soon.” Accordingly, Respondent has failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) of the <titleistcncpt.com> domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the <titleistcncpt.com> domain name in bad faith as Respondent has prior adverse UDRP decisions against it. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to show bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides the citation for a prior UDRP proceeding in which Respondent was found to have acted in bad faith. Accordingly, the Panel finds that Respondent registered the <titleistcncpt.com> domain name in bad faith based on Respondent’s prior history of bad faith in UDRP proceedings.
Complainant has provided evidence that Respondent inactively holds the domain name, as Respondent fails to use the <titleistcncpt.com> domain name for any purpose. Inactively holding a confusingly similar domain name can show bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of the resolving webpage, which displays the message “titleistcncpt.com is coming soon.” The Panel agrees that Respondent uses the domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the TITLEIST mark at the time of registering the <titleistcncpt.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name shows bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent had actual knowledge of Complainant’s TITLEIST mark as the mark is famous worldwide. Further, Complainant has registered the TITLEIST mark in many countries, and Complainant uses the virtually identical domain name (<titleist.com>). The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <titleistcncpt.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 22, 2018
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