Golden Bear International, Inc. v.
Kangdeock-ho
Claim Number: FA0308000190644
Complainant is Golden Bear International, Inc., North
Palm Beach, FL (“Complainant”)
represented by Tien Chu.
Respondent is Kangdeock-ho, Daegu,
Korea (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nicklausgolf.com> registered with Hangang
Systems, Inc. d/b/a Doregi.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
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 29, 2003; the Forum received a hard copy of the
Complaint on September 2, 2003. The Complaint was submitted in both Korean and
English.
On
September 2, 2003, Hangang Systems,Inc. d/b/a Doregi.com confirmed by e-mail to
the Forum that the domain name <nicklausgolf.com> is registered
with Hangang Systems,Inc. d/b/a Doregi.com and that Respondent is the current
registrant of the name. Hangang Systems,Inc. d/b/a Doregi.com has verified that
Respondent is bound by the Hangang Systems,Inc. d/b/a Doregi.com registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
September 11, 2003, a Korean language Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of October 1, 2003 by which Respondent
could file a Response to the Complaint, was transmitted to Respondent via
e-mail, post and fax, to all entities and persons listed on Respondent's
registration as technical, administrative and billing contacts, and to
postmaster@nicklausgolf.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 9, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) 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."
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.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been
satisfied through the Korean language Complaint and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nicklausgolf.com>
domain name is confusingly similar to Complainant’s NICKLAUS mark.
2. Respondent does not have any rights or
legitimate interests in the <nicklausgolf.com> domain name.
3. Respondent registered and used the <nicklausgolf.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
produced evidence of several trademark registrations with the United States
Patent and Trademark Office (“USPTO”) for the NICKLAUS mark, including Reg. No.
1,919,841 (registered on September 19, 1995) related to golf gloves.
Complainant operates the official website for Jack Nicklaus and Complainant at
the <nicklaus.com> domain name.
Respondent
registered the <nicklausgolf.com> domain name on May 23, 1999.
Respondent is using the disputed domain name to divert Internet users to a
search-engine website, which provides links to a variety of other 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."
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.
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.
Complainant has
established that it has rights in the NICKLAUS mark through its trademark
registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning”).
Complainant
contends that Respondent’s <nicklausgolf.com> domain name is
confusingly similar to Complainant’s NICKLAUS mark because the disputed domain name
incorporates Complainant’s entire mark and simply adds the generic term “golf”
to the end of the mark. The addition of a generic term such as “golf” does not
significantly differentiate a domain name from a mark, especially when the
generic term directly relates to Complainant’s business. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to Complainant’s HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which Complainant is engaged,
does not take the disputed domain name out of the realm of confusing
similarity).
The
Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has
failed to come forward and contest the allegations in Complainant’s submission.
Therefore, the Panel accepts all of the reasonable allegations and inferences
in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian
AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do);
see also Desotec N.V. v. Jacobi
Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence).
Furthermore, due
to Respondent’s failure to contest the Complaint, the Panel is permitted to
presume that Respondent lacks any rights to or legitimate interests in the
disputed domain name in accord with Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because Respondent never submitted a Response or
provided the Panel with evidence to suggest otherwise); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Respondent is
using the <nicklausgolf.com> domain name to redirect Internet
traffic to a search-engine website, which provides links to a number of other
websites. Respondent’s use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant’s business does not represent 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 WeddingChannel.com Inc. v. Vasiliev a/k/a NA &
Free Domains Parking, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding
that Respondent’s use of the disputed domain name to redirect Internet users to websites
unrelated to Complainant’s mark, websites where Respondent presumably receives
a referral fee for each misdirected Internet user, was not a bona fide offering
of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that Respondent’s
diversionary use of Complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names).
Moreover, there
is no evidence that suggests Respondent is commonly known by NICKLAUS GOLF or <nicklausgolf.com>.
Thus, the Panel finds that Respondent has failed to demonstrate any rights to
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that
one has been commonly known by the domain name prior to registration of the
domain name to prevail").
The Panel finds
that Policy ¶ 4(a)(ii) has been established.
The Panel
presumes from the record in this proceeding that Respondent’s use of the <nicklausgolf.com>
domain name to divert Internet traffic to a search-engine website, which offers
links to other websites, was for commercial gain. The Panel finds that
Respondent’s registration and use of the disputed domain name indicates that
Respondent intentionally attempted to attract Internet users to its website for
commercial gain by creating a likelihood of confusion with Complainant’s mark
as to the source, sponsorship, affiliation or endorsement of Respondent’s
website, which evidences bad faith registration and use pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum
Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Accordingly, the
Panel finds that Complainant has established 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 <nicklausgolf.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
October 17, 2003
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