Golfsmith International, Inc. v. Wilma
Freedman
Claim
Number: FA0505000479433
Complainant is Golfsmith International, Inc. (“Complainant”),
represented by H. Lisa Calico of Wong & Cabello, L.L.P.,
PO Box 685108, Austin, TX 78768-5108.
Respondent is Wilma Freedman (“Respondent”),
North Junction Street, 30 b, EH6 6HN, Edinburgh GB.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain name at issue is <golfsmitheurope.com>, registered with Schlund+Partner
Ag.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
James
A, Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
17, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 19, 2005.
On
May 20, 2005, Schlund+Partner Ag confirmed by e-mail to the National
Arbitration Forum that the domain name <golfsmitheurope.com> is
registered with Schlund+Partner Ag and that Respondent is the current
registrant of the name. Schlund+Partner Ag has verified that Respondent is
bound by the Schlund+Partner Ag 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
May 24, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 13, 2005 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@golfsmitheurope.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 17, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A. Crary
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." 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 makes the following assertions:
1. Respondent’s <golfsmitheurope.com>
domain name is confusingly similar to Complainant’s GOLFSMITH mark.
2. Respondent does not have any rights or
legitimate interests in the <golfsmitheurope.com> domain name.
3. Respondent registered and used the <golfsmitheurope.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Golfsmith International, Inc., uses its
GOLFSMITH mark in association with golf equipment, clothing, retail store
services, online store services and mail-order catalog services.
Complainant holds a registration with the United States Patent and
Trademark Office (“USPTO”) for the GOLFSMITH mark (Reg. No. 1,447,761
registered July 14, 1987). In addition,
Complainant’s GOLFSMITH mark is registered in numerous other countries around
the world. Complainant has used its
mark since at least as early as 1968.
Complainant operates more than forty stores in the United States under
the GOLFSMITH mark and also has operations in Canada and England. Complainant has spent millions of dollars
advertising and promoting its GOLFSMITH goods and services. Complainant has also developed valuable
goodwill in the GOLFSMITH mark in association with its goods and services.
Respondent registered the <golfsmitheurope.com> domain name on October 7, 2004. Respondent is using the disputed domain name
to divert Internet users to a website that advertises web hosing and domain
name services for Respondent’s web host.
Furthermore, in response to a cease-and-desist letter sent to Respondent
by Complainant, Respondent stated in an e-mail, dated April 29, 2005, that
Respondent would be willing to sell the disputed domain name registration to
Complainant for an amount in the area of $14,000 or the equivalent in golf
equipment.
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 presumptive rights in the GOLFSMITH mark through registration of
the mark with the USPTO and other governmental authorities. In the absence of a response from
Respondent, the Panel has before it no evidence to rebut Complainant’s prima
facie case of rights. Therefore,
the Panel concludes that Complainant has established rights in the GOLFSMITH
mark under Policy ¶ 4(a)(i). 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.”); see also
Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May
23, 2005) (“Complainant proves that it has rights in the trademark and service
mark, DELL, as a result of Complainant’s registrations with the United States
Patent and Trademark Office, which predate the registration of the disputed
domain name.”).
The <golfsmitheurope.com>
domain name includes Complainant’s federally registered GOLFSMITH mark in its
entirety and adds the geographically descriptive term “Europe” and the generic
top-level domain (“gTLD”) “.com.”
Numerous panels have held under the Policy that the additions of a
geographic term and a gTLD to a mark in which Complainant has rights do not
create a domain name that is distinct from Complainant’s mark. The Panel holds that, despite these additions,
the disputed domain name is confusingly similar to Complainant’s registered
mark. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that
the domain name <cmgiasia.com> is confusingly similar to the
complainant’s CMGI mark); see also Wal-Mart
Stores, Inc. v. Walmarket Canada, D2000-0150
(WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is
confusingly similar to the complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal significance since use of a
gTLD is required of domain name registrants.").
Complainant has
satisfied Policy ¶ 4(a)(i).
When left with
no response from Respondent to rebut any of Complainant’s contentions, 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.”).
Complainant
contends that Respondent does not have rights or legitimate interests in the <golfsmitheurope.com>
domain name, which is confusingly simlilar to Complainant’s GOLFSMITH
mark. Complainant’s assertion in this
instance is sufficient to establish a prima facie case in support of its
allegations and shift the burden to Respondent to provide evidence to rebut
Complainant’s contentions. However,
Respondent has failed to respond and has, therefore, failed to meet its
burden. Thus, the Panel determines that
Respondent lacks rights and legitimate interests in the disputed domain
name. See Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that under certain circumstances the mere
assertion by the complainant that the respondent has no rights or legitimate
interests is sufficient to shift the burden of proof to the respondent to
demonstrate that such rights or legitimate interests do exist); see also
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’
failure to respond can be construed as an admission that they have no
legitimate interests in the domain names).
Complainant
asserts that Respondent is not commonly known by the <golfsmitheurope.com>
domain name. Furthermore, the WHOIS
information for the domain name indicates that Respondent is known as “Wilma
Freedman.” Respondent has not provided
a response to contradict Complainant’s arguments. Therefore, the Panel finds that Respondent has not established
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). 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); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that the respondent does not have rights in a domain name when
the respondent is not known by the mark).
Complainant
asserts that Respondent is using the <golfsmitheurope.com> domain
name to divert Internet users to a website that advertises web hosting and
domain name services offered by Respondent’s web host. The Panel determines that Respondent’s use of
a domain name that contains Complainant’s GOLFSMITH mark in its entirety to
redirect Internet users to another’s business is not a use in connection with a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See U.S. Franchise
Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the
complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s
mark “as a portal to suck surfers into a site sponsored by Respondent hardly
seems legitimate”).
Furthermore,
Complainant has provided evidence that Respondent offered to sell the <golfsmitheurope.com>
domain name registration to Complainant.
Respondent’s willingness to dispose of any purported rights in the
disputed domain name is further evidence that Respondent lacks rights and
legitmate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Am.
Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate
interests in the domain name is further evidenced by Respondent’s attempt to
sell its domain name registration to Complainant, the rightful holder of the
RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun
Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that, under the
circumstances, the respondent’s apparent willingness to dispose of its rights
in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name).
Complainant has
satisfied Policy ¶ 4(a)(ii).
Evidence
provided by Complainant in this proceeding shows that Respondent offered to
sell the <golfsmitheurope.com> domain name registration to
Complainant for approximately $14,000 or the equivalent amount in golf
equipment. Complainant asserts that
this is evidence that Respondent registered the disputed domain name for the
purpose of selling the domain name registration to Complainant for an amount in
excess of Respondent’s out-of-pocket expenses pursuant to Policy ¶
4(b)(i). The Panel agrees and concludes
that this is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See World Wrestling Fed’n Entmt., 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); see also Gutterbolt,
Inc. v. NYI Bldg. Prod. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000)
(finding that the demanded consideration does not have to be monetary in
nature, but can be anything of value that exceeds the amount spent in
registering and maintaining the domain name).
Although Policy
¶ 4(b) includes a list of four specific situations which constitute evidence of
bad faith registration and use, the Panel is not limited to this list and may
take into account additional evidence in making a finding under Policy ¶
4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Complainant argues
that its registration of the GOLFSMITH mark with the USPTO provided Respondent
with constructive notice of Complainant’s rights in the mark. Furthermore, Respondent’s registration of a
domain name that contains Complainant’s registered mark in its entirety
suggests that Respondent had actual knowledge of Complainant’s rights at the
time of registration. The Panel finds
that Respondent chose the disputed domain name based on the distinctive nature
of Complainant’s GOLFSMITH mark.
Registration of a domain name that includes another’s mark despite
actual or constructive knowledge of the markholder’s rights is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer
chooses a mark he knows to be similar to another, one can infer an intent to
confuse."); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
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 <golfsmitheurope.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A, Crary, Panelist
Dated:
June 29, 2005
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