CS Corp., LLC, d/b/a Terrace Hills Golf Course v. Jian Lang
Claim Number: FA2303002035440
Complainant is CS Corp., LLC, d/b/a Terrace Hills Golf Course (“Complainant”), represented by Shawn N. Sullivan, US. Respondent is Jian Lang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <terracehillsgolf.com> (“Domain Name”), registered with Internet Domain Service BS Corp.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on March 10, 2023; Forum received payment on March 10, 2023.
On March 14, 2023, Internet Domain Service BS Corp confirmed by e-mail to Forum that the <terracehillsgolf.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 March 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2023 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@terracehillsgolf.com. Also on March 14, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant, CS Corp., LLC, d/b/a Terrace Hills Golf Course, operates an Iowa golf facility and club. Complainant asserts common law rights in the TERRACE HILLS GOLF COURSE mark based on the continuous use by it and its predecessors in title for almost 60 years. Respondent’s <terracehillsgolf.com> domain name is confusingly similar to Complainant’s mark because it incorporates the TERRACE HILLS GOLF COURSE mark, deletes the term “course”, and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <terracehillsgolf.com> domain name. Complainant has not authorized or licensed Respondent any rights in the TERRACE HILLS GOLF COURSE mark. Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. From 2010 to 2019 Complainant’s predecessor in title owned the <terracehillsgolf.com> domain name and used it for a website (“Complainant’s Website”) to promote the golf course and its services. Following the failure to renew the registration of the Domain Name, Respondent registered the Domain Name and has used it to resolve to a website (“Respondent’s Website”) that mimics Complainant’s Website (as it existed in 2019), including copying the layout, design and copyrighted material. Respondent then adds additional advertisements, for which Respondent likely receives revenue.
Respondent registered and uses the <terracehillsgolf.com> domain name in bad faith. Respondent registered the Domain Name following the failure to renew by Complainant’s predecessor in title in order to take advantage of confusion with the TERRACE HILLS GOLF COURSE mark. Respondent passes off as Complainant by mimicking Complainant’s Website to create Respondent’s Website where it receives advertising revenue. Respondent also had actual knowledge of Complainant’s rights in the TERRACE HILLS GOLF COURSE mark at the time of registration, given the use of the Domain Name for a website mimicking Complainant’s Website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TERRACE HILLS GOLF COURSE mark. The Domain Name is confusingly similar to Complainant’s TERRACE HILLS GOLF COURSE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the TERRACE HILLS GOLF COURSE mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant and its predecessors in title have operated a golf course under the TERRACE HILLS GOLF COURSE mark since 1964. They have extensively used the mark in advertising including on Complainant’s Website and social media and clearly have a significant reputation in the Altoona, Iowa area. The Panel is satisfied that Complainant’s almost 60 years of continuous use of the TERRACE HILLS GOLF COURSE mark in trade and advertising is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the TERRACE HILLS GOLF COURSE mark for the purposes of Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”).
The Panel finds that the <terracehillsgolf.com> Domain Name is confusingly similar to the TERRACE HILLS GOLF COURSE mark as it incorporates the TERRACE HILLS GOLF portion of the TERRACE HILLS GOLF COURSE mark removing only the descriptive element “course” and adding the “.com” gTLD. The removal of a generic element from an otherwise wholly incorporated trade mark and addition of a gTLD is not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the TERRACE HILLS GOLF COURSE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Jian Lang” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to the Respondent’s Website which impersonates or mimics Complainant’s Website by reproducing (including reproducing all copyrighted materials) Complainant’s Website as it was in 2019. Respondent then adds advertisements to this website for which it is likely to receive revenue. Respondent’s use of the Domain Name to impersonate Complainant for the purpose of commercial gain through placement of advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Name, January 24, 2020, Respondent had actual knowledge of Complainant’s TERRACE HILLS GOLF COURSE mark. The Domain Name was formally owned by Complainant who let it expire in 2019. Respondent registered the Domain Name and uses it for a website that reproduces the content of the Complainant’s Website as it was when the Domain Name expired in 2019. Respondent hence uses the Domain Name to pass itself off as Complainant for financial gain or to disrupt Complainant’s business. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to pass itself off as the Complainant by mimicking Complainant’s Website and receiving revenue through third party advertisements it offers on Respondent’s Website. Use of a disputed domain name to imitate a complainant’s website can be evidence of an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv).
Furthermore, the Panel notes that the actions of Respondent, in registering the Domain Name the failure of Complainant’s predecessor in title to renew the Domain Name (and then using it to take advantage of any reputation that arose from its use by Complainant’s predecessor in title) amounts to opportunistic registration which may in and of itself be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Aurbach v. Saronski, FA 155133 (Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”); see also Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit 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 <terracehillsgolf.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 8, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page