Augusta National, Inc. v. Tim Mooney / Masterstickets.net
Claim Number: FA2110001970122
Complainant is Augusta National, Inc. (“Complainant”), represented by Christopher A. Cosper of Hull Barrett, PC., Georgia, USA. Respondent is Tim Mooney / Masterstickets.net (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <masterstickets.net>, registered with GoDaddy.com, LLC.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 21, 2021; the Forum received payment on October 21, 2021.
On October 22, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <masterstickets.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2021 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@masterstickets.net. Also on October 25, 2021, 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.
A timely Response was received and determined to be complete on December 9, 2021.
On December 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Augusta National, Inc., operates the Augusta National Golf Club and hosts the Masters Tournament every April. Complainant has rights in the MASTERS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,069,545, registered July 12, 1977). See Compl. Ex. F. Respondent’s <masterstickets.net> domain name is confusingly similar to Complainant’s MASTERS mark as it merely adds the term “tickets” to the mark.
Respondent does not have rights or legitimate interests in the <masterstickets.net> domain name. Respondent cannot claim rights or legitimate interests in the disputed domain name since the MASTERS mark is famous. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to suggest an association with Complainant and resells Complainant’s tickets without authorization.
Respondent registered and uses the <masterstickets.net> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business and attract users to its own website where it suggests an affiliation with Complainant and resells Complainant’s tickets. Additionally, Respondent had actual knowledge of Complainant’s rights in the MASTERS mark and attempted to further the confusion for its own commercial gain.
B. Respondent
Respondent, Tim Mooney / Masterstickets.net, has owned and operated the <masterstickets.net> domain name for over twenty years. Respondent added a disclaimer on every page of the website for the disputed domain name over seven years ago, after being contacted by Complainant. Respondent claims it has stopped using the domain name and requests Complainant purchase the disputed domain name for a fair price. The disputed domain name was registered on February 7, 2001. See Compl. Ex. B.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.
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.
Complainant asserts rights in the MASTERS mark based on registration with the USPTO (e.g., Reg. No. 1,069,545, registered July 12, 1977). See Compl. Ex. F. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the MASTERS mark with the USPTO, and the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <masterstickets.net> domain name is confusingly similar to Complainant’s MASTERS mark as it merely adds the term “tickets” to the mark. The addition of a generic or descriptive term to a mark is insufficient to distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). Thus, the disputed domain name is confusingly similar to the MASTERS mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <masterstickets.net> domain name since the MASTERS mark is famous, and inclusion of a famous mark in a disputed domain name indicates that a respondent in not commonly known by the disputed domain name and lacks rights and legitimate interests in it. See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also Chevron Intellectual Property LLC v. CHLEO TEMPLE, FA 1731844 (Forum June 16, 2017) (acknowledging the likelihood of a respondent’s lack of legitimate interests in a disputed domain name when the name incorporates a famous mark belonging to another entity). Here, Complainant asserts that the MASTERS mark is famous. See Compl. Exs. D & E. Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii) and lacks rights and legitimate interests in the domain under Policy ¶ 4(a)(ii).
Additionally, Complainant argues Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use since Respondent uses the disputed domain name to suggest an association with Complainant and resells Complainant’s tickets without authorization. Using a disputed domain name to suggest a connection with a complainant or pass off as a complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Use of a disputed domain name to resell a complainant’s goods without authorization does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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).”). Complainant provides screenshots showing the resolving website for the disputed domain name features Complainant’s MASTERS marks and offers tickets for Complainant’s MASTERS tournament for sale, in violation of Complainant’s ticket contract. See Compl. Exs. G‑I. Respondent is not using the domain name for 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <masterstickets.net> domain name in bad faith because Respondent uses the disputed domain name to disrupt Complainant’s business and attract users to its own website where it resells Complainant’s tickets. Using a disputed domain to pass off as being associated with a complainant or to resell a complainant’s goods can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See The Prudential Insurance Company of America v. Henrique Bryan Souza / DATAMIX ENSINO DE INFORMATICA, FA 1718308 (Forum Apr. 3, 2017) (finding bad faith where the respondent used the disputed domain name to resolve to a website upon which the respondent imitated the complainant’s mark, logo, and color scheme to create a “strikingly similar” website); see also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see additionally G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (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).”); see furthermore Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). Complainant provides screenshots showing Respondent used the MASTERS mark on the resolving website for the disputed domain name and also offers Complainant’s tickets for sale in violation of the ticket contract. See Compl. Exs. G‑I. Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the MASTERS mark based on Respondent’s actions attempting to further the confusion for its own commercial gain. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and the use the respondent makes of the domain name. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”); see also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)); see additionally Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Respondent argues that it included a disclaimer on every page of the website for the <masterstickets.net> domain name at Complainant’s request over seven years ago, but offers no evidence of any agreement with Complainant to use its trademark. Therefore, the Panel finds Respondent had actual knowledge of Complainant’s rights in the MASTERS mark, further evidencing bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <masterstickets.net> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: December 27, 2021
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