Skyhawke Technologies, LLC v. The Tidewinds Group,
Inc. a/k/a DNS Admin
Claim Number: FA0703000949608
PARTIES
Complainant is Skyhawke Technologies, LLC (“Complainant”), represented by Jordan
S. Weinstein, of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skycaddy.com>, registered
with Fabulous.com
Pty Ltd.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 29, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 30, 2007.
On March 29, 2007, Fabulous.com Pty Ltd. confirmed by e-mail to
the National Arbitration Forum that the <skycaddy.com> domain name is
registered with Fabulous.com Pty Ltd. and
that Respondent is the current registrant of the name. Fabulous.com
Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 April 5, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 25, 2007 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@skycaddy.com by e-mail.
A timely Response was received and determined to be complete on April 25, 2007.
An Additional Submission from
Complainant was received on April 27, 2007, and was considered to be timely and
complete pursuant to Supplemental Rule 7.
Respondent submitted an untimely submission on May 3, 2007, which
although untimely, was considered by the Panel.
On May 4, 2007, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant
Skyhawke Technologies, LLC (“Skyhawke”) is a Mississippi-based limited liability company formed in 2000, which develops innovative positioning systems for recreational use, specifically by golfers. Skyhawke integrates Global Positioning Satellite (“GPS”) and wireless technology on multiple handheld computer platforms. The company has a broad range of technology experience through its founders, management team, and professional staff. Skyhawke’s alliances with Professional Golf Association (“PGA”) caddies and other well-known professional golf figures provide a basic understanding of the game of golf and ways to enhance the player’s experience on the course.
Complainant asserts rights in the SKYCADDIE mark through a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,977,019 issued July 26, 2005). Complainant alleges that Respondent’s <skycaddy.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) as the disputed domain name replaces the letters “ie” at the end of the mark with the letter “i,” making the disputed domain name phonetically identical to Complainant’s mark.
Complainant contends that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii) in the <skycaddy.com> domain name as Respondent is not commonly known by the disputed domain name and is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Complainant further asserts that Respondent is using the <skycaddy.com> domain name to profit from the goodwill associated with Complainant’s mark by hosting a website that displays hyperlinks, some of which link to Complainant’s own products as well as those of its competitors. Complainant thus asserts that the disputed domain name was registered and is being used in bad faith according to Policy ¶ 4(a)(iii).
Respondent
Respondent acknowledges that Complainant
holds rights in the SKYCADDIE mark, but contends that Complainant does not hold
rights in the “sky caddy” term used in the disputed domain name.
Respondent states that it holds the disputed domain name for a third party, Mr. Corban, and that the third party has rights and legitimate interests in the <skycaddy.com> domain name.
With regards to bad faith registration and use, Respondent again asserts that the third party registered the disputed domain name and plans to use it in good faith.
Additional Submission by
Complainant
Complainant contends that despite Respondent’s contentions that there is a third party that owns the domain name, there is no evidence in the record to this effect. Complainant again states that the information displayed on the website that resolves from the <skycaddy.com> domain name demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name, as well as its bad faith registration and use.
Additional Submission by
Respondent
Respondent contends that it regularly obtains
and holds domain names for clients, including the third party in this
case. Respondent again states that this
third party does have rights and legitimate interests in the disputed domain
name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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;
(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.
Preliminary Issue: Deficient Response
In its Additional Submission,
Complainant contends that Respondent’s Response fails to comply with several
sections of the Policy under Rule 5(b).
The Panel chooses to consider the Response despite these minor, formal
deficiencies. See Strum v. Nordic Net
Preliminary Issue: Respondent Defined
In the instant proceeding, Respondent is identified in the WHOIS information as “The Tidewinds Group, Inc. a/k/a DNS Admin.” Additionally, the registrar, Fabulous.com Pty Ltd., identified Respondent as “The Tidewinds Group, Inc. a/k/a DNS Admin.” The Panel finds that the identified Respondent, The Tidewinds Group, Inc. a/k/a DNS Admin., is the single entity identified under the UDRP and NAF’s Supplemental Rule 1(d) as the Respondent in this case, regardless of the assertion that a third party, John E. Corban, of J.C. Engineering, controls the <skycaddy.com> domain name. Accordingly, under NAF’s Supplemental Rule 1(d), the Panel disregards any arguments relating to a third party that is alleged to have control of the disputed domain name, and instead analyzes the proceeding with regard to whether Complainant satisfies the burdens as set out by the Policy regarding the named Respondent. Precedent for such a determination by the Panel is found in Solutia, Inc. v. Sur Hosting, FA 716391 (Nat. Arb. Forum Aug. 30, 2006).
Complainant holds a registered
trademark with the United States Patent and Trademark Office (“USPTO”) for the
SKYCADDIE mark (Reg. No. 2,977,019 issued July 26, 2005). The Panel finds that Complainant has established rights in
the SKYCADDIE mark pursuant to Policy ¶ 4(a)(i). See
Expedia, Inc. v. Emmerson, FA
873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations
with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant
to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Complainant alleges that Respondent’s <skycaddy.com> domain name is phonetically similar to Complainant’s SKYCADDIE mark because it simply changes the “ie” in the mark to a “y” in the disputed domain name. In addition, the disputed domain name adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that these slight changes do not sufficiently distinguish the disputed domain name from Complainant’s mark, and therefore that Respondent’s <skycaddy.com> domain name is confusingly similar to Complainant’s SKYCADDIE mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct. 31, 2003) (“Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is phonetically identical and confusingly similar to Complainant's mark.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainant, in its Additional Submission, quotes Respondent’s Response as acknowledging that “Complainant’s trademark is similar to the [disputed] domain name.” Therefore, Respondent has conceded that Complainant has rights to the SKYCADDIE mark, and Complainant has therefore satisfied the requirements of Policy ¶ 4(a)(i).
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 (Nat. Arb. 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 Policy ¶ 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 (Nat. Arb. 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 contends that Respondent is not commonly known by the <skycaddy.com> domain name. The WHOIS information lists Respondent as “The Tidewinds Group, Inc.,” and there is no other evidence in the record indicating that Respondent is commonly known by the disputed domain name. Respondent alleges that Mr. Corban is commonly known by the <skycaddy.com> domain name because of his USPTO trademark registration of the “Sky Caddy” mark. In its Additional Submission, however, Complainant indicates that there is no evidence in the record demonstrating that there is any business or contractual relationship between Respondent and Mr. Corban. Furthermore, Complainant notes that Mr. Corban is not a named party to this dispute. Therefore, the Panel finds that Respondent is not commonly known by the <skycaddy.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this disrupts Complainant’s business by diverting potential customers to Respondent’s website. Therefore, the Panel finds that Respondent’s registration and use of the <skycaddy.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel also finds that Respondent’s <skycaddy.com> domain name is likely to cause confusion among consumers searching for Complainant’s SKYCADDIE product. Specifically, consumers may become confused as to the affiliation, sponsorship, or endorsement of the competing golfing goods advertised on Respondent’s website. Therefore, the Panel finds that Respondent’s registration and use of the <skycaddy.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skycaddy.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dated: May 18, 2007
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