Skyhawke Technologies, LLC v.
Claim Number: FA0705000977213
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 <wwwskygolf.com>, registered with Compana, LLC.
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.
Calvin A. Hamilton as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 7, 2007.
On May 11, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwskygolf.com> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 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@wwwskygolf.com by e-mail.
A timely Response was received and determined to be complete on June 5, 2007.
On June 12, 2007, Complainant filed an Additional Submission and Respondent filed an Additional Submission on June 18, 2007, both determined to comply with Supplemental Rule 7.
On
June 8, 2007, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Calvin A. Hamilton as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
The
domain name <wwwskygolf.com> is identical and/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 that is
subject to the complaint;
3. Respondent registered and used the domain
name in bad faith.
B. Respondent
1.
The
disputed domain is made up of two generic and descriptive words, “sky” and
“golf.”
2.
Generic words
in combination are themselves a generic designation.
3.
The
Complaint fails to prove that Respondent has no rights or legitimate interests
in the domain name.
4.
Respondent’s
links in question are provided pursuant to Google’s terms and are triggered by
search requests entered by computer users.
Therefore, Respondent has no control over what terms advertisers bid on
at Google and what terms appear on its website.
5.
There is
nothing wrong with Respondent’s use of the generic phrase to connect these
concepts with keywords in order to provide advertisers with targeted customer
traffic.
6.
Having
demonstrated that Complainant’s alleged mark is generic and/or merely
descriptive, it must follow that Respondent did not register, and is not using,
the disputed domain name in bad faith.
C. Additional Submissions
Complainant alleges in his Additional Submission that:
1.
First,
that an assessment of genericness or descriptiveness must be made in connection
with the goods or services for which trademark rights are claimed.
2.
Second,
a mark may not be attacked by arguing merely that it is “descriptive.” It is well accepted that descriptive terms may acquire secondary meaning and
thereby function as a mark.
3.
Third, a
mark must be assessed in its entirety.
Even if individual words contained within a mark are merely descriptive,
the combination of the words may be protectible as a trademark.
4.
In this
case, Complainant’s federal trademark registrations are prima facie evidence that SKY GOLF is not generic or merely
descriptive, and is a protectible trademark.
5.
Respondent
has neither argued nor shown that “SKY,” “GOLF” or “SKYGOLF” is generic for
rangefinders. None of the websites to
which Respondent cites shows use of “SKYGOLF” or “SKY GOLF” as a generic term
for rangefinders.
Respondent alleges in his Additional Submission that:
1.
Complainant’s
Additional Submission is beyond the scope of the UDRP Rules. Under Rule 12 of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”), it is quite clearly stated that “[i]n
addition to the complaint and the response, the Panel may request, in its sole
discretion, further statements or documents from either of the Parties.”
2.
In the
event that the Panel accepts such an unsolicited filing, according to
Supplemental Rule 7, Complainant’s submission is beyond the scope of the
Supplemental Rules. What Complainant has
filed instead of “declarations or remarks” is an undisguised attempt to amend
its Complaint which violates the Forum’s own Supplemental Rules.
3.
Complainant
relies on US Trademark Law and the Panel is not bound by
FINDINGS
1) Skyhawke Technologies, LLC (“Skyhawke”) is a Mississippi-based limited liability company formed in 2000, which develops innovative positioning systems for recreational use, including specifically by golfers. Skyhawke integrates Global Positioning Satellite (“GPS”) and wireless technology on multiple handheld computer platforms.
2) Skyhawke also does business as SkyGolf.
3) Skyhawke is the owner of the following U.S. trademark registrations and applications: SKY GOLF, Reg. No. 2,453,373, registered on May 22, 2001; SKYGOLF GPS, Reg. No. 2,933,479, registered on Mar. 15, 2005; and SkyGolf, Ser. No. 76/627,641, which filing date was Jan. 12, 2005.
4) Skyhawke has used the mark SKYGOLF GPS in connection with an electronic satellite tracking and information system since at least as early as January of 2001.
5) Skyhawke is also the registrant of the domain name <skygolf.com>.
6) The domain name at issue is <wwwskygolf.com> (with no period between "www" and "skygolf").
7) Complainant has never authorized or licensed its SKY GOLF, SKYGOLF GPS, or SKYGOLF marks to Respondent.
8) The domain name <wwwskygolf.com> is being used in connection with webpages containing sponsored links. The landing page is entitled "Wwwskygolf.com", and contains links such as “Sky Golf,” “Golf store,” and “Golf accessory.” Some of those links promote Complainant’s own SKYGOLF GPS® and SKYCADDIE® golf rangefinders, but are not owned or controlled by Complainant.
9) The links on Respondent's landing page lead to additional pages within Respondent's website containing sponsored links to external sites. Respondent earns revenue through these sponsored links.
10) Complainant’s Additional Submission complies with Supplemental Rule 7 and does not amend his Complaint; rather, it contains “declarations and remarks” regarding his previous contentions.
11) The Domain Name is Confusingly Similar to Complainant’s Trademarks.
12) Respondent has No Rights or Legitimate Interests in respect of the Domain Name.
13) The Domain Name was Registered and Used in Bad Faith.
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.
Complainant contends that it has registered the SKY GOLF mark with the United States Patent and Trademark Office (“USPTO”) and provides evidence of one registration for the mark: Reg. No. 2,453,373 issued May 22, 2001. Complainant also registered the mark SKYGOLF GPS, Reg. No. 2,933,479, on Mar. 15, 2005; and filed the application of SkyGolf, Ser. No. 76/627,641, on January 12, 2005. The trademark registrations and applications are prima facie evidence of the validity of the registered marks, of the registrant’s ownership of the marks and of the registrant’s exclusive right to use the registered marks in commerce. This is sufficient to establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (finding that “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding that registration with the USPTO established rights in the marks under Policy ¶ 4(a)(i)).
Complainant
contends that the <wwwskygolf.com>
domain name is
confusingly similar to Complainant’s SKY GOLF mark because it uses the mark in
its entirety and simply adds the prefix “www” and the generic top-level domain
(“gTLD”) “.com” to the mark. Complainant
also contends that the <wwwskygolf.com> domain
name causes further confusion as it is nearly identical to Complainant’s
<skygolf.com> domain name, which it uses to direct traffic to its main
consumer website <skygolfgps.com>.
The Panel finds that the
addition of the letters “www” does not sufficiently distinguish the disputed
domain name from the mark to avoid a finding of confusing similarity under
Policy ¶ 4(a)(i). See Marriott Int’l,
Inc. v Momm Amed Ia, FA
95573, (Nat. Arb. Forum Oct. 23, 2000) (finding that the domain
name, wwwmarriott.com is
confusingly similar to Complainant’s MARRIOTT marks and is virtually identical
to Complainant’s own domain name, www.marriott.com);
see also Golfsmith Int’l, Inc. v. NA,
FA 938023 (Nat. Arb. Forum Apr. 26,
2007) (finding that “Respondent’s <wwwgolfsmith.com> domain name is confusingly
similar to Complainant’s GOLFSMITH mark.
The disputed domain name includes Complainant’s mark in its entirety
with the addition of the letters ‘www’ at the beginning of the mark. As the only alteration to Complainant’s mark
is the result of a common typographical error of failing to insert the period
between the letters ‘www’ and the remainder of the domain name, the disputed
domain name is not sufficiently distinct from Complainant’s mark. Thus, the Panel finds that the disputed domain
name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i).”).
Additionally, the inclusion of the gTLD “.com” is
irrelevant to determining whether a domain name is confusingly similar or
not. See 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); see also Isleworth Land Co. v. Lost in Space, SA, FA
117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis.”).
While Respondent contends that the <wwwskygolf.com> domain name is comprised of common, descriptive terms and as such cannot be found to be identical to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
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 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 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”).
Complainant argues that because Respondent’s WHOIS
information for the <wwwskygolf.com> domain name identifies
Respondent as “Texas International Property Associates,” and there is no other
evidence in the record indicating that Respondent is commonly known by the <wwwskygolf.com>
domain name, Respondent is not commonly known by the disputed domain name. Additionally, Complainant asserts that
Respondent is not licensed or authorized to use or register a domain name
incorporating Complainant’s SKY GOLF mark.
Therefore, given that Respondent is not commonly known by
the contested domain name, Respondent’s assertion as to his rights or
legitimate interests in the <wwwskygolf.com> domain name pursuant
to Policy ¶ 4(c)(ii) must be rejected. See
Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact
information for the disputed domain [name], one can infer that Respondent,
Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in
any derivation.”); 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 alleges that, given the generic
and/or descriptive nature of the words “sky” and “golf,” Respondent has
legitimate interests in the domain name.
Nothing could be further from the truth. This argument does not serve for purposes of
showing Respondent’s rights and legitimate interests in the domain name.
Complainant further contends that Respondent
is using the <wwwskygolf.com> domain
name to redirect Internet users to Respondent’s website displaying links to
third-party websites selling Complainant’s goods. Respondent asserts that the links in question
are provided pursuant to Google’s terms and are triggered by search requests
entered by computer users and that Respondent has no control over what terms
advertisers bid on at Google and what terms appear on its website.
Complainant has shown that Respondent’s <wwwskygolf.com> domain name is affiliated with Hitfarm, which Complainant argues is a domain-optimazation service, which provides pay-per-click revenue to the domain name owner. Respondent’s use of the disputed domain name to display links to generate revenue from pay-per-click fees is not a legitimate free exchange of information as Respondent contends; therefore, it is not 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Respondent has not
carried the burden of proof. Accordingly,
the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent understands that, having “demonstrated” that Complainant’s alleged mark is generic and/or merely descriptive, it must follow that Respondent did not register, and is not using, the disputed domain name in bad faith.
The Panel finds that such a demonstration did not take place. On the contrary, it has been shown that said terms have acquired a secondary meaning in favor of Complainant, which serves for purposes of discrediting Respondent’s contentions.
Complainant contends that Respondent’s <wwwskygolf.com> domain name is a typosquatted version of Complainant’s <skygolf.com> domain name as the disputed domain name simply removes the period separating the “www” prefix and Complainant’s SKY GOLF mark. Complainant contends that Respondent is using this typosquatted version of Complainant’s domain name to redirect Internet users seeking Complainant’s goods, but who make a common error when typing Complainant’s domain name into the browser, to Respondent’s website displaying links to third-party websites for the profit of Respondent.
The Panel determines that such use of Respondent’s <wwwskygolf.com> domain name constitutes typosquatting which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
Respondent alleges that he is in the business of providing locator services and that he is not attempting to pass itself off as Complainant. However, Complainant has provided sufficient evidence to show that Respondent is using the <wwwskygolf.com> domain name to redirect Internet users to Respondent’s website for the profit of Respondent through pay-per-click fees. Complainant affirms that Internet users may become confused as to Complainant’s affiliation with the disputed domain, particularly since the <wwwskygolf.com> domain name is confusingly similar to Complainant’s SKY GOLF mark and the <skygolf.com> domain name registered by Complainant. Additionally, Complainant asserts that Internet users may be further confused by the fact that some of the disputed domain name’s links refer to websites selling Complainant’s products. Complainant alleges that Respondent is profiting from this confusion in the form of pay-per-click revenue.
The Panel concludes that Respondent’s use of the <wwwskygolf.com> domain name to redirect Internet traffic for the profit of Respondent constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant asserts that Respondent is using the <wwwskygolf.com> domain name to display links to third-party websites, such as “Golf Store,” “Golf Accessory,” and “Sky Golf,” some of which sell Complainant’s products but are not owned or controlled by Complainant.
The Panel determines that Respondent’s use of the disputed domain name constitutes disruption and is evidence of bad faith. See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Finally,
Complainant contends that Respondent’s behavior constitutes bad faith as
Respondent has registered several other domain names incorporating famous
trademarks, such as ZRT Laboratory, LLC v.
The Panel believes that, despite the fact that a few of the cases were indeed consented transfers, this does not deny the fact that the Respondent has developed a pattern of domain name registrations incorporating famous marks, and such a pattern is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Nat. Arb. Forum Nov. 3, 2003) (finding that the complainant’s submission of WHOIS evidence that listed the respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that the respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)).
The Panel finds that Policy ¶ 4(a)(iii) has thus been satisfied.
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 <wwwskygolf.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton,
Panelist
Dated: June 21, 2007
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